`Trials@uspto.gov
`571-272-7822
`
`Paper 63
`Date: February 26, 2024
`
`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 GREGG I. ANDERSON, JOHN F. HORVATH, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`HORVATH, Administrative Patent Judge.
`
`ORDER
`Denying Petitioner’s Motion to Admit Supplemental Information
`37 C.F.R. §§ 42.5(a), 42,123(a)
`
`
`
`
`
`
`
`
`
`
`IPR2020-00906
`Patent 10,225,479 B2
`
`
`
`I. INTRODUCTION
`Apple Inc. (“Petitioner”) moves to submit as supplemental
`information a brief (Ex. 1042, “KPO brief”) that Corephotonics Ltd. (Patent
`Owner) submitted to the Korean Patent Office containing statements
`regarding the availability of miniature camera lens designs circa 2013.
`Paper 50 (“Mot.”), 1–3. Patent Owner opposes. Paper 51 (“Opp.”), 1–4.
`“A party seeking to submit supplemental information more than one
`month after the date the trial is instituted . . . must show why the
`supplemental information reasonably could not have been obtained earlier,
`and that consideration of the supplemental information would be in the
`interests-of-justice.” 37 C.F.R. § 42.123(b).
`Petitioner argues good cause exists for admitting the KPO brief
`because it could not have been obtained earlier than August 2, 2021, when it
`was submitted to the Korean Patent Office, approximately 1 month before
`Petitioner submitted this motion. See Mot. 1; Ex. 1042, 29.1 Petitioner
`further argues good cause exists for admitting the KPO brief because Patent
`Owner “has taken opposite positions in this proceeding.” Id. Specifically,
`Petitioner argues that Patent Owner argued in its Patent Owner Response
`(Paper 40, “PO Resp.”) that a person skilled in the art in 2013 would not
`have looked beyond the “rich literature of miniature lens designs” to
`miniaturize Kawamura’s2 “200-mm lens designed in 1981,” but would
`instead have looked to miniaturize “designs that were purpose-made for
`miniature cameras.” Id. (quoting PO Resp., 45). By contrast, Petitioner
`
`
`1 We cite to the page number of the underlying document (i.e., the English
`translation of the KPO brief) rather than to the page number of the exhibit,
`as does Petitioner.
`2 JP S5862609 A
`
`2
`
`
`
`
`
`
`IPR2020-00906
`Patent 10,225,479 B2
`argues, Patent Owner argued in its KPO brief that “there were hardly any
`telephoto lens assemblies applied to portable terminals” in 2013. Id. at 2
`(quoting Ex. 1042, 3). Petitioner argues Patent Owner thereby “concede[s]
`that miniature telephoto [lens] designs were not widely available in 2013.”
`Id. at 3. Petitioner further argues that Patent Owner also admitted to the
`Korean Patent Office that a person skilled in the art in 2013 would have used
`“the ‘structure and shape’ of ‘the conventional telephoto lens assembly for
`general cameras,’” i.e., for cameras other than smartphone cameras. Id. at 3
`(quoting Ex. 1042, 4–5).
`Patent Owner disputes Petitioner’s contentions, arguing that the
`statements it made to the Korean Patent Office concerned the availability of
`telephoto lenses having a total track length (“TTL”) of less than 6.5 mm.
`Opp. 2 (citing Ex. 1042, 4–5). Patent Owner agues these statements do not
`concern telephoto lenses with larger TTL, which are encompassed by the
`claims of the ’479 patent. Id. Patent Owner further argues that Petitioner
`has cited at least five references in inter partes reviews — Ogino,3 Chen,4
`Iwasaki,5 Hsieh,6 and Parulski7 — that illustrate the availability of telephoto
`lens designs for mobile phones and digital cameras that predate June 13,
`2013, which is the earliest possible priority date of the ’479 patent. Id.
`
`
`3 US 9,128,267 B2 (foreign filing date: Mar. 29, 2013 (code 30))
`4 US 10,324,273 B2 (foreign filing date: Aug. 29, 2016 (code 30)). We note
`that Chen does not predate the earliest possible’497 patent priority date.
`5 US 9,678,310 B2 (foreign filing date: Mar. 25, 2013 (code 30))
`6 US 9,864,171 B2 (foreign filing date: July 24, 2015 (code 30)). We note
`that Hsieh does not predate the earliest possible’497 patent priority date.
`7 US 7,859,588 B2 (filing date: Mar. 9, 2007 (code 22))
`
`3
`
`
`
`
`IPR2020-00906
`Patent 10,225,479 B2
`
`
`
`II. ANALYSIS
`Considering the evidence and argument presented by the parties, we
`do not find admitting Exhibit 1042 into evidence would be in the interest of
`justice. Although Petitioner has shown that it timely submitted its motion to
`admit the KPO brief, Petitioner has not shown that the KPO brief contains
`admissions that are contrary to statements Patent Owner has made in this
`proceeding.
`Here, Patent Owner contends that a person skilled in the art in 2013
`“would not have looked to [Kawamura’s] 200-mm lens designed in 1981 in
`selecting a design for Parulski’s narrow lens,” but would instead have
`“look[ed] to designs that were purpose-made for miniature cameras” for
`which there was “no shortage of miniature lens designs.” PO Resp. 45.
`Before the Korean Patent Office, Patent Owner did make the seemingly
`contradictory statements that in 2013 “there was only one prior document
`that mounted the telephoto lens assembly on a portable terminal” and that
`doing so required a telephoto lens assembly having “a new structure and
`shape different from those of the conventional telephoto lens assembl[ies]
`for general cameras.” Ex. 1042, 2–3. However, Patent Owner’s statements
`were made in the context of arguing for the patentability of claims that
`expressly required mounting a telephoto lens having TTL < 6.5 mm in cell-
`phones that were between 6.5 and 7.9 mm thick. Id. at 3 (“the invention of
`the subject patent adopted a new structure that: (1) has a short total track
`length (TTL < 6.5)”); id. at 3–4 (table showing the 6.5–7.9 mm thickness of
`smartphones released by major smartphone manufacturers in 2012 and
`2013).
`
`4
`
`
`
`
`
`
`IPR2020-00906
`Patent 10,225,479 B2
`As Patent Owner admits here, the claims of the ’479 patent do not
`require a telephoto lens having TTL < 6.5 mm. Opp. 2. Indeed, Petitioner’s
`combination of Parulski and Kawamura scales Kawamura’s lens to have a
`TTL of 15.343 mm and mounts the scaled lens in Parulski’s 23 mm thick
`digital camera. See Pet. 19–20 (scaling Kawamura’s lens to focus an image
`on the 1/2.5” sensor of the EasyShare camera); Ex. 1033, 64 (EasyShare
`camera thickness of 2.3 cm (23 mm)). When viewed in context, Patent
`Owner’s statements to the Korean Patent Office are not inconsistent with its
`statements made here, when the statements made here are understood to
`refer to the availability of telephoto lens designs for telephoto lenses having
`a TTL > 6.5 mm.
`Accordingly, for the reasons discussed above, we deny Petitioner’s
`motion to admit Exhibit 1042 as evidence in this proceeding.
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s motion to admit Exhibit 1042 as
`Supplemental Information is denied.
`
`
`
`5
`
`
`
`
`IPR2020-00906
`Patent 10,225,479 B2
`
`
`FOR PETITIONER:
`
`
`
`Michael Parsons
`Andrew Ehmke
`Jordan Maucotel
`David O’Brien
`HAYNES & BOONE, LLP
`michael.parsons.ipr@haynesboone.com
`andy.ehmke.ipr@ haynesboone.com
`jordan.maucotel@ haynesboone.com
`david.obrien.ipr@haynesboone.com
`
`
`FOR PATENT OWNER:
`
`Neil C. Rubin
`C. Jay Chung
`RUSS AUGUST & KABAT
`nrubin@raklaw.com
`jchung@raklaw.com
`
`
`6
`
`
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