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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`APPLE INC.,
`Petitioner,
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`v.
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`COREPHOTONICS, LTD.,
`Patent Owner
`____________
`
`Case IPR2020-00906
`Patent 10,225,479
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`
`PETITIONER’S BRIEF POST-REMAND
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`4855-1382-0829 v.2
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`Petitioner’s Brief Post-Remand
` IPR2020-00906 (Patent No. 10,225,479)
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`TABLE OF CONTENTS
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`I.
`II.
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`Introduction ...................................................................................................... 1
`Discussion ........................................................................................................ 2
`A. APA-Compliant Decision on Remand .................................................. 2
`1.
`Board Should Base its Decisions on Arguments
`Advanced by a Party and to which the Opposing Party
`was Given a Chance to Respond ................................................. 3
`An Issue Raised Sua Sponte by the Board Requires
`Notice and Opportunity to Respond ........................................... 4
`Supposed Errors that the Panel Raised (or Raises) sua
`sponte Relative to Dr. Sasián’s Expert Testimony may
`Not be Considered without Notice and a Meaningful
`Opportunity to Respond ........................................................................ 5
`1.
`Supposed Error Regarding Abbe Number for Ogata’s
`Third Lens Element is a Red Herring ......................................... 6
`Supposed Discrepancy Regarding Fourth- and Tenth-
`Order Aspheric Terms is also a Red Herring .............................. 7
`The Board’s Newly Articulated Concern Regarding Lens
`Prescription Data for Kawamura is Entirely Speculative ........... 8
`The Record Supports Petitioner’s Contention regarding
`Scaling of Ogata’s Lens for Parulski’s Digital Camera ........................ 9
`The Record Supports Petitioner’s Contention regarding
`Scaling of Kawamura’s Lens for Parulski’s Digital
`Camera ................................................................................................. 13
`III. Conclusion ..................................................................................................... 17
`CERTIFICATE OF SERVICE ............................................................................ 19
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`2.
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`2.
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`3.
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`B.
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`C.
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`D.
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`I.
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`Petitioner’s Brief Post-Remand
` IPR2020-00906 (Patent No. 10,225,479)
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`INTRODUCTION
`This proceeding returns to the Board after an appeal of a final written deci-
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`sion (Paper 54) that found that Petitioner had “failed to muster sufficient evidence
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`to demonstrate…that Ogata’s lens could have been scaled to work in Parulski’s
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`camera with a reasonable expectation of success.” See Apple Inc. v. Corephotonics,
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`Ltd., 81 F.4th 1353, 1361 (Fed. Cir. 2023) (“Remand Decision”); IPR2020-00906,
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`Dec. at 2, 19. The Court of Appeals determined that the Board, in violation of the
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`Administrative Procedure Act (APA), had based its decision on a ground not raised
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`by any party. Remand Decision, 81 F.4th at 1354.
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`“Because the Board based its decision on a typographical error without
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`sufficiently explaining its significance, made sua sponte findings that lacked
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`substantial evidence, and did not resolve the issue the parties presented,” the Court
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`vacated and remanded for “further proceedings that meet APA’s requirements for
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`notice and the opportunity to respond.” Id. at 1362. According to the Court, the
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`Board focused on “an issue that no party meaningfully raised or asserted was
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`relevant. And because the Board’s analysis was focused on this issue, it failed to
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`thoroughly assess the critical issue outlined by the parties, i.e., whether there
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`would have been a reasonable expectation of success in combining Parulski and
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`Ogata, considering manufacturing and scalability concerns.” Id. at 1362 (quoting
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`from Power Integrations v. Lee, 797 F.3d 1318, 1325 (Fed. Cir. 2015)) (internal
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`quotation marks omitted).
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`Petitioner’s Brief Post-Remand
` IPR2020-00906 (Patent No. 10,225,479)
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`In its post-remand Order, the Board requests briefing on: (1) what consti-
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`tutes an APA-compliant decision on remand, (2) whether it can consider on
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`remand issues that it has sua sponte considered to be errors, and (3) what evidence
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`currently in the record supports Petitioner’s contentions that Ogata’s embodiment I
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`lens and Kawamura’s example 1 lens can be scaled to project images onto a 1/2.5”
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`image sensor compatible with Parulski’s digital camera, what weight should be
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`given to that evidence, and why. See (Order of Conduct) Paper 60 at 11.
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`II.
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`DISCUSSION
`A. APA-Compliant Decision on Remand
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`The APA generally requires “the Board [to] base its decision on arguments
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`that were advanced by a party, and to which the opposing party was given a chance
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`to respond.” In re IPR Licensing, Inc., 942 F.3d, 1363, 1368-69 (Fed. Cir. 2019).
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`In limited circumstances the Board may raise issues sua sponte, but to do so it
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`must “give[] the parties notice and an opportunity to respond.” Nike Inc. v. Adidas
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`AG, 955 F.3d 45, 53 (Fed. Cir. 2020). The Board ran afoul of these principles.
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`Specifically, the Board’s determination that a typographical error in Dr.
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`Sasián’s declaration was dispositive of the issues in the case did not comport with
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`notice requirements of the APA. See Remand Decision, 81 F.4th at 1362
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`(“Apple…had no reason to anticipate that the typographical error would be the
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`Petitioner’s Brief Post-Remand
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`basis for the Board’s decision, given that the parties did not brief, argue, or even
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`suggest this error was dispositive or would impact the claimed lens parameters.”)
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`On remand, the Board should base its decision on arguments that were
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`actually advanced by a party. Doing so would help to ensure adequate grounds for
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`the Board’s decisions and avoid “red herring” arguments not tested by adversarial
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`briefing or firmly anchored in an evidentiary record. To the extent that the panel’s
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`briefing order suggests that the Board may persist in sua sponte issues that were
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`already addressed with disfavor by the reviewing court or that it posits further sua
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`sponte issues (see Paper 60 at 3-7), it must afford Petitioner a meaningful right to
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`respond, including testimonial evidence from its expert.
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`1.
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`Board Should Base its Decisions on Arguments Advanced
`by a Party and to which the Opposing Party was Given a
`Chance to Respond
`Under the APA's notice provisions relevant to Board proceedings, “persons
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`entitled to notice of an agency hearing shall be timely informed of...the matters of
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`fact and law asserted,” and the Board “shall give all interested parties opportunity
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`for...the submission and consideration of facts [and] arguments.” 5 U.S.C.
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`§§554(b)(3), (c)(1). The Board “must base its decision on arguments that were
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`advanced by a party, and to which the opposing party was given a chance to
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`respond.” Masimo Corp. v. Apple Inc., 2023 WL 5921622 (Fed. Cir. Sep. 12,
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`2023) (quoting In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir.
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`2016); see also 81 F.4th at 1362 (Board erred here when analysis focused on “an
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`issue that no party meaningfully raised or asserted was relevant”); Alacritech, Inc.
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`v. Intel Corp., 966 F.3d 1367, 1372 (Fed. Cir. 2020) (Board erred where its
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`“reasoning appear[ed] to be untethered to either party's position”).
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`Moreover, the APA requires the Board to “provide an adequate ground” for
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`its decisions. Power Integrations, 797 F.3d at 1325 (quoting In re Thrift, 298 F.3d
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`1357, 1366 (Fed. Cir. 2002)). The reviewing court has explained that the Board
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`fails to satisfy this obligation when it misapprehends or ignores the parties’
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`arguments and instead “focuse[s] on a red herring.” See id. (Board spent a “signifi-
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`cant portion of [its] opinion…rejecting an argument that [a party] never made.”).
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`Because so much of the Board’s analysis has been focused on red herring—an
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`Abbe number data-entry error and a nonexistent inconsistency in aspherical surface
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`data—“it failed to thoroughly assess the critical issue outlined by the parties, i.e.,
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`whether there would have been a reasonable expectation of success in combining
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`Parulski and Ogata considering manufacturing and scalability concerns.” See
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`Remand Decision, 81 F.4th at 1361-62 (analogizing Power Integrations).
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`2.
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`An Issue Raised Sua Sponte by the Board Requires Notice
`and Opportunity to Respond
`The Board may consider an issue that it raises sua sponte only after giving
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`notice of the issue and only after affording the parties—and particularly the party
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`against which the supposed issue is raised—an opportunity to respond on the issue.
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`Petitioner’s Brief Post-Remand
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`See Remand Decision, 81 F.4th at 1360 (citing Magnum Oil Tools, 829 F.3d at
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`1381; Nike, 955 F.3d at 53). Moreover, opportunity to respond includes reasonable
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`opportunity to present argument and evidence on the new issue raised sua sponte
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`by the Board. See Axonics, Inc. v. Medtronic, Inc. 75 F.4th 1374, 1383 (Fed. Cir.
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`2023). The Axonics requirement for reasonable opportunity to present argument
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`and evidence is consistent with the APA requirements that the Board must give
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`parties “opportunity for…the submission and consideration of facts [and]
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`arguments,” and permit parties “to submit rebuttal evidence, and to conduct such
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`cross-examination as may be required for a full and true disclosure of the facts.” 5
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`U.S.C. §§554(c), 556(d).
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`B.
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`Supposed Errors that the Panel Raised (or Raises) sua sponte
`Relative to Dr. Sasián’s Expert Testimony may Not be Considered
`without Notice and a Meaningful Opportunity to Respond
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`Here, two supposed issues/errors were raised sua sponte in the final written
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`decision (Paper 54) referenced by, and now reprised in, the panel’s briefing Order
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`(Paper 60). Each supposed issue/error was noted with disfavor by the reviewing
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`court. See Remand Decision, 81 F.4th at 1361-62. In addition, the panel now raises
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`a further issue regarding Kawamura—again sua sponte. See Paper 60 at 5-7.
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`Where, as arguably here, the panel assumes for itself an extra-judicial role as
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`technical expert, it should be mindful that the party against whom the panel offers
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`its expertise has no procedural path to cross-examine the panel (or panelist) or
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`Petitioner’s Brief Post-Remand
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`offer countervailing evidence—whether offered expertise turns out to be insightful,
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`misguided, or introduces red herring. See In re Zurko, 258 F.3d 1379, 1386 (Fed.
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`Cir. 2001) (“With respect to core factual findings in a determination of patentabil-
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`ity…the Board cannot simply reach conclusions based on its own understanding or
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`experience…. Rather, the Board must point to some concrete evidence in the rec-
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`ord in support of these findings. To hold otherwise would render the process of
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`appellate review for substantial evidence on the record a meaningless exercise”).
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`Petitioner addresses each of the Board’s sua sponte issues in a manner
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`consistent with the limitation imposed by the panel that “no additional or
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`supplemental evidence may be submitted.” Paper 60 at 11. However, for avoidance
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`of doubt, this limitation conflicts with precedent and statute (see supra discussion
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`of Axonics, 5 U.S.C. §§554(c), 556(d)), and Petitioner requests the opportunity to
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`present supplemental evidence on each sua sponte issue raised by the Board.
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`1.
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`Supposed Error Regarding Abbe Number for Ogata’s
`Third Lens Element is a Red Herring
`As observed by the reviewing Court, “Abbe number is neither recited in the
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`challenged claims nor does the record contain any evidence that it impacts any lens
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`parameter that is recited in the challenged claims.” Remand Decision, 81 F.4th at
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`1361. For at least this reason, the Board should recognize lack of substantial basis
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`for it to rely on an Abbe number error for Ogata’s third lens element and sua
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`sponte “call[] into question Petitioner’s contention that a person skilled in the art
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`would have known that Ogata’s lens could be scaled to work in Parulski’s camera
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`with a reasonable expectation of success.” See Dec. at 16. No party has argued that
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`Abbe number affects a scaling analysis. Moreover, the record indicates that
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`Ogata’s lens exhibited excellent optical performance at its original, embodiment I
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`scale (see APPL-1021, ¶36; APPL-1026, 3:4-5) and, as scaled, maintains excellent
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`performance (see APPL-1021, FIG. 3B (evidenced by field curvature and OPD fan
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`plots)) even with the apparent Abbe number error. Whatever Dr. Moore’s opinion
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`regarding a hypothetically “significant change” in refractive index or Abbe number
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`on performance of a lens design (see Dec. at 15 (citing Ex. 2015, ¶88)), it is not se-
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`riously contended that this Abbe number error suggests an “unacceptable design.”
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`Petitioner will offer further testimonial evidence of non-materiality, if permitted.
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`2.
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`Supposed Discrepancy Regarding Fourth- and Tenth-Order
`Aspheric Terms is also a Red Herring
`Although the panel does not overtly reprise its supposed concerns regarding
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`data for fourth- and tenth-order terms for aspheric surfaces in its briefing Order, it
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`does reference a span of pages which included the imagined issue. See Paper 60 at
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`5 (citing Dec. at 13-16). As observed by the reviewing Court, supposed aspheric
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`surface data “inconsistencies” were not even errors. Id. at 1362 (noting apparent
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`agreement of parties). Fourth- and tenth-order terms are non-linear terms and vari-
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`ances in these terms due to linear scaling are entirely expected. The Board has sua
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`sponte introduced an issue without basis; no party has or could reasonably advance
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`such theory to call into question expectation of success. Petitioner will offer further
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`testimonial evidence disposing of this supposed issue, if permitted.
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`3.
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`The Board’s Newly Articulated Concern Regarding Lens
`Prescription Data for Kawamura is Entirely Speculative
`Finally, the panel raises a newly-articulated concern on remand related to
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`lens prescription data for Kawamura. See Paper 60 at 5-7. The panel asserts (again
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`sua sponte and again without basis in any argument of Patent Owner) that “Dr.
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`Sasián entered into the Zemax Lens Data Editor…[data that] differs from the lens
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`prescription data for Kawamura’s example 1 lens” (Id. at 5), presumably laying
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`groundwork for it (or Patent Owner) to now speculate that Dr. Sasián’s scaling
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`analysis of Kawamura is unreliable. The panel summarizes its newly-articulated
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`concern in a table comparing refractive index and Abbe number values appearing
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`in Kawamura itself with differing values appearing in Appendix Fig. 4C. Id. at 6.
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`For avoidance of any doubt, Dr. Sasián’s scaling analysis of the Kawamura
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`lens assembly was performed using the prescription data from Kawamura itself,
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`not any extraneous data depicted in Appendix Fig. 4C. Moreover, Appendix Fig.
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`4C is not even referenced in Dr. Sasián’s scaling analysis. As detailed below in
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`Section II.C.2, the record supports Petitioner’s contention regarding scaling of
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`Kawamura’s lens for Parulski’s digital camera by illustrating progression from
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`Kawamura’s dimensionless cross-section (APPL-1012, Fig. 1), using Kawamura’s
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`prescription data (APPL-1012, 3 (table for Example 1)), and applying Smith’s
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`teaching of scaling to explain that Kawamura’s lens assembly, scaled to a 1/2.5”
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`image sensor, results in an assembly with 5.72mm EFL, 6.892mm TTL, 63.4º FOV
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`and f/2.9. Moreover, Dr. Sasián’s ray trace and cross-section based on his Zemax
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`modeling of the scaled Kawamura lens assembly clearly shows five lens elements
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`consistent with Kawamura’s dimensionless cross-section, not six associated with
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`some other lens assembly. Petitioner will offer further testimonial evidence of non-
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`materiality of the Appendix Fig. 4C data, if permitted.
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`C. The Record Supports Petitioner’s Contention regarding Scaling
`of Ogata’s Lens for Parulski’s Digital Camera
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`The panel’s briefing order asks “what evidence currently in the record sup-
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`ports Petitioner’s contention that [Ogata’s lens] can be scaled by a POSITA to pro-
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`ject images onto [a] 1/2.5” image sensor [such as for] Parulski’s digital camera?”
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`Paper 60 at 11. The answer is that the Petition is supported by Dr. Sasián’s
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`testimony (including his modeling of the scaled lens assembly in Zemax), Dr.
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`Durand’s testimony,1 and various supporting references that all demonstrate that
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`1 Dr. Durand, like Dr. Sasián, testifies as to the reasons that a POSITA would look
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`to scale Ogata’s wide-angle lens assembly for use in Parulski’s dual-aperture
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`digital camera, to the characteristics of the scaled Ogata lens assembly (5.72mm
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`focal length, 6.892mm TTL, 63.4º FOV, f/2.9 result) per Smith, and ultimately that
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`a POSITA would have recognized that Ogata could have been successfully scaled
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`Petitioner’s Brief Post-Remand
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`Ogata’s lens assembly can be scaled to the 5.72mm focal length appropriate for a
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`1/2.5” image sensor. See Pet., 24-28; (Sasián) APPL-1021, ¶¶35-39; (Durand)
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`APPL-1003, ¶¶56-60; (Smith) APPL-1020, 57. Notwithstanding the red herring
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`issues raised sua sponte by the Board previously and reprised in the briefing Order,
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`Petitioner’s scaling analysis is straightforward and indicates that a POSITA could
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`have—and indeed would have—scaled Ogata’s lens assembly to have a 5.72mm
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`focal length appropriate for a 1/2.5” image
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`sensor and Parulski’s digital camera.
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`Dr. Sasián’s analysis starts with a wide-
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`angle lens assembly that Ogata illustrates (as
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`is conventional) as a dimensionless cross-
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`section. (Ogata) APPL-1026, Fig. 1 (ex-
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`plained in APPL-1021, ¶¶35; see also Pet.,
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`for use with a 1/2.5” image sensor. APPL-1003, ¶¶56-65. Dr. Durand also testifies
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`as to how Ogata’s scaled lens assembly meets a need of Parulski for such an
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`assembly and as to a POSITA’s reasonable expectation of success in making the
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`combination. APPL-1003, ¶¶61-65. Dr. Sasián, having personal knowledge of the
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`Zemax model, testifies as to those same characteristics of the scaled Ogata lens
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`assembly (embodiment I) as shown after scaling in Zemax. APPL-1021, ¶39.
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`24-25). Note the dimensionless nature of the lens assembly cross-section and the
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`exemplary dimensional and other parameters of Ogata’s embodiment I lens pre-
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`scription. APPL-1026, 7:35-61 (detailed in APPL-1021, ¶36; see also Pet., 25-26).
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`From there, Dr. Sasián
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`explains the viability and math-
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`ematical nature of scaling, in-
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`cluding which dimensions and
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`measures are affected by scal-
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`ing, which are not, and for those
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`that are affected, how they are
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`affected. APPL-1021, ¶¶35-39.
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`Notably, linear aberrations—
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`like the dimensions specified by
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`the lens prescription—scale
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`along with the design. This means that as the lens assembly is scaled down, the lin-
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`ear aberrations lessen, ultimately improving the optical performance of the lens as-
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`sembly in that regard. APPL-1021, ¶27; see also (Smith) APPL-1020, p.57 (“A
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`lens prescription can be scaled to any desired focal length simply by multiplying
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`all of its dimensions by the same constant. All of the linear aberration measures
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`will then be scaled by the same factor. Note however, that percent distortion, chro-
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`matic difference of magnification (CDM), the numerical aperture or f number, ab-
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`errations expressed as angular aberrations, and any other angular characteristics re-
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`main completely unchanged by scaling”); see also APPL-1003, ¶58; Pet., 26 (typos
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`in APPL-1020 refs to Smith).
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`Finally, Dr. Sasián explains the 5.72mm focal length, 6.892mm TTL, 63.4º
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`FOV, f/2.9 result of scaling Ogata to a 1/2.5” image sensor. APPL-1021, ¶¶37-39.
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`This scaling is consistent with Smith’s referenced teaching (see APPL-1020, 57),
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`and an illustration of the
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`scaled Ogata lens assem-
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`bly (5.72447mm EFL,
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`6.89155mm TTL) is pre-
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`sented in the Petition,
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`showing a cross-section
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`of the lens assembly and
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`ray-trace data generated
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`by Zemax. The illustra-
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`tion (reproduced here) is consistent with Dr. Sasián’s analysis, the analysis in the
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`Petition, and that in Dr. Durand’s motivation to combine analysis. The ray-trace
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`and cross-section for the scaled (5.72mm focal length) Ogata lens assembly
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`demonstrates that Ogata can be scaled by a POSITA to project images onto a
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`1/2.5” image sensor such as for Parulski’s digital camera. Patent Owner has not
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`challenged the accuracy of the model or the ability of a POSITA to scale Ogata’s
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`lens in this way. Patent Owner’s own expert (Dr. Moore) confirmed in deposition
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`the routine nature of scaling. APPL-1041, 89:13-94:20 (factor of 10 or 100).
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`The weight of the foregoing evidence is great in that (i) it is corroborated by
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`two experts, (ii) it demonstrates both the ability to scale Ogata to a 1/2.5” image
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`sensor and the results of such scaling insofar as all relevant claimed parameters are
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`concerned, (iii) the testimonial evidence is supported by underlying authority in the
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`field (e.g., Smith), and (iv) the scaling analysis taught by Smith and to which both
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`Drs. Sasián and Durand testify is confirmed computationally in Zemax modeling
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`performed by Dr. Sasián.
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`D. The Record Supports Petitioner’s Contention regarding Scaling
`of Kawamura’s Lens for Parulski’s Digital Camera
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`The briefing Order also asks what evidence currently in the record supports
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`Petitioner’s contention that Kawamura’s lens can be scaled by a POSITA to project
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`images onto a 1/2.5” image sensor such as for Parulski’s digital camera. Paper 60
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`at 11. The answer is again that the Petition is supported by Dr. Sasián’s testimony
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`(including his modeling of the scaled lens assembly in Zemax), Dr. Durand’s testi-
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`mony,2 and various supporting references which all demonstrate that Kawamura’s
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`2 Dr. Durand, like Dr. Sasián, testifies to the reasons that a POSITA would look to
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`Petitioner’s Brief Post-Remand
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`lens assembly can be scaled to the 16.33 mm focal length appropriate for a 1/2.5”
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`image sensor. See Pet., 17-21;
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`(Sasián) APPL-1021, ¶¶40-45;
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`(Smith) APPL-1020, 57.
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`Dr. Sasián’s analysis starts
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`with the Kawamura telephoto lens
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`assembly that is—as is again
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`conventional—a dimensionless cross-section. See (Kawamura) APPL-1012, Fig. 1
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`scale Kawamura’s telephoto lens assembly for use in Parulski’s dual-aperture
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`digital camera, to the characteristics of the scaled Kawamura lens assembly
`
`(16.33mm focal length, 15.343mm TTL, 24.3º FOV, f/4.0) per Smith, and
`
`ultimately to the point that POSITA would have recognized that Kawamura can
`
`be—and would have been—successfully scaled for use with a 1/2.5” image sensor.
`
`APPL-1003, ¶¶44-55. Dr. Durand also testifies as to how Kawamura scaled lens
`
`assembly meets a need of Parulski for such an assembly and to POSITA’s
`
`reasonable expectation of success in making the combination. APPL-1003, ¶¶50-
`
`55. Dr. Sasián, having personal knowledge of the Zemax model, testifies as to
`
`those same characteristics of the scaled Kawamura lens assembly (example 1) as
`
`shown after scaling in Zemax. APPL-1021, ¶45.
`
`4855-1382-0829 v.2
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`- 14 -
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`
`
`Petitioner’s Brief Post-Remand
` IPR2020-00906 (Patent No. 10,225,479)
`
`(explained in APPL-1021, ¶35; see also Pet., 24-25; APPL-1003, ¶46 (annotating
`
`
`
`to identify lens elements)). As with Ogata, the Kawamura lens assembly cross-
`
`section is dimensionless, and at one exemplary scale has dimensional and other
`
`parameters of Kawamura’s example 1
`
`prescription. See APPL-1012, 3 (table for
`
`Example 1).
`
`From there, Dr. Sasián explains the vi-
`
`ability and mathematical nature of scaling,
`
`including which dimensions and measures
`
`are affected by scaling, which are not, and
`
`for those that are affected, how they are af-
`
`fected. APPL-1021, ¶¶40-45. As before, linear aberrations—like the dimensions
`
`specified by the lens prescription—scale with the design. As before, the result is
`
`smaller linear aberrations for the scaled down lens. APPL-1021, ¶43 (citing
`
`(Smith) APPL-1020, p.57); see also APPL-1003, ¶47; Pet., 19 (typos in APPL-
`
`1020 refs to Smith).
`
`Finally, Dr. Sasián explains the 16.33mm focal length, 15.343mm TTL,
`
`24.3º FOV, f/4.0 result of scaling Kawamura (i.e., of scaling the example 1 pre-
`
`scription data for the FIG. 1 lens assembly cross-section) to a 1/2.5” image sensor.
`
`APPL-1021, ¶¶43-45. This scaling is consistent with Smith’s referenced teaching
`
`4855-1382-0829 v.2
`
`
`- 15 -
`
`
`
`Petitioner’s Brief Post-Remand
` IPR2020-00906 (Patent No. 10,225,479)
`
`(see APPL-1020, 57), and an illustration of the scaled Kawamura lens assembly
`
`
`
`(16.3302mm EFL, 15.34309mm TTL) is presented in the Petition, showing a
`
`cross-section of the lens assembly and ray-trace data as generated by Zemax. This
`
`illustration (reproduced below) is consistent with Dr. Sasián’s analysis, the
`
`analysis in the Petition, and Dr. Durand’s motivation to combine analysis.
`
`The ray-trace and cross-section for the scaled (16.33mm focal length)
`
`Kawamura lens assembly
`
`demonstrates that Kawa-
`
`mura’s lens can be scaled
`
`by a POSITA to project
`
`images onto a 1/2.5” im-
`
`age sensor such as for Pa-
`
`rulski’s digital camera.
`
`APPL-1021, ¶45. Patent
`
`Owner has not challenged the accuracy of the model or the ability of POSITA to
`
`scale Kawamura’s lens in this way. APPL-1041, 89:13-94:20 (factor of 10 or 100).
`
`The weight of the foregoing evidence is great in that (i) it is corroborated by
`
`two experts, (ii) it demonstrates both the ability to scale Kawamura to a 1/2.5”
`
`image sensor and the results of such scaling insofar as all relevant claimed
`
`parameters are concerned, (iii) the testimonial evidence is supported by underlying
`
`4855-1382-0829 v.2
`
`
`- 16 -
`
`
`
`Petitioner’s Brief Post-Remand
` IPR2020-00906 (Patent No. 10,225,479)
`
`authority in the field (e.g., Smith), and (iv) the scaling analysis taught by Smith
`
`
`
`and to which both Drs. Sasián and Durand testify is confirmed computationally in
`
`Zemax modeling performed by Dr. Sasián.
`
`III.
`
`CONCLUSION
`On remand, the Board should base its decision on arguments that were
`
`actually advanced by a party. Although the Board may raise issues sua sponte, if it
`
`does so, it must give the parties notice and an opportunity to respond. Here, the
`
`opportunity to respond must, per the requirements of Axonics and the APA, include
`
`reasonable opportunity to present rebuttal evidence. Because the panel has limited
`
`post remand briefing such that “no additional or supplemental evidence may be
`
`submitted,” it should base its decision on remand solely on arguments that were
`
`actually advanced by a party at trial. Alternatively, if the Board wishes to proceed
`
`with issues it raised sua sponte, it must allow rebuttal evidence.
`
`Regardless, record evidence supports Petitioner’s contentions that Ogata’s
`
`embodiment I lens and Kawamura’s example 1 lens can be scaled to project
`
`images onto the 1/2.5” image sensor such as for Parulski’s digital camera, and the
`
`Board should hold claims 19-22 obvious on the Parulski/Ogata/Kawamura-based
`
`combinations advanced by Petitioner.
`
`4855-1382-0829 v.2
`
`
`- 17 -
`
`
`
`Dated: January 16, 2024
`
`Petitioner’s Brief Post-Remand
` IPR2020-00906 (Patent No. 10,225,479)
`Respectfully submitted,
`/David W. OBrien/
`David W. O’Brien, Reg. No. 40,107
`Lead Counsel for Petitioner
`HAYNES AND BOONE, LLP
`
`4855-1382-0829 v.2
`
`- 18 -
`
`
`
`Petitioner’s Brief Post-Remand
` IPR2020-00906 (Patent No. 10,225,479)
`CERTIFICATE OF SERVICE
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that service was
`
`made on the Patent Owner as detailed below.
`
`Date of service: January 16, 2024
`
`Manner of service: Electronic Service by E-Mail
`
`Documents served: Petitioner’s Brief Post-Remand
`
`Persons served: 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 Boulevard, 12th Floor
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`
`/David W. OBrien/
`David W. O’Brien
`Reg. No. 40,107
`Lead Counsel for Petitioner
`HAYNES AND BOONE, LLP
`
`4855-1382-0829 v.2
`
`- 19 -
`
`
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