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. 10,255,479
`_______________
`DECLARATION OF JOSÉ SASIÁN, PH.D.
`UNDER 37 C.F.R. § 1.68 IN SUPPORT OF PETITIONER’S REPLY
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`Apple v. Corephotonics
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`APPL-1039
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`Declaration of José Sasián, Ph.D. in support of
` Petitioner’s Reply in IPR2020-00906
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`TABLE OF CONTENTS
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 3
`OBVIOUSNESS .............................................................................................. 4
`A. Dr. Moore relies on an incorrect premise that my opinion requires
`Kawamura and Ogata to be used in a miniature camera module. ......... 4
`A POSITA would have considered the Kawamura and Ogata designs
`in selecting lenses for Parulski’s digital camera embodiment. ............. 6
`1.
`Dr. Moore’s belief that a POSITA would not scale Kawamura
`and Ogata is based on the incorrect premise that the
`combination is limited to miniature camera modules. ................ 7
`Patent Owner’s list of miniature lens requirements should be
`rejected because they are based on improperly limiting Parulski
`to miniature camera modules using miniature lenses. ................ 9
`A POSITA would have looked to Kawamura among other lens
`designs when considering how to implement Parulski's camera.
` ...................................................................................................11
`Patent Owner’s analysis is incorrect because it is based on a
`POSITA’s understanding of technology in 1981 and incorrect
`understanding of ongoing relevance of older lens designs. ................11
`Lens design software analysis supports combining Parulski with
`Ogata and Kawamura. .........................................................................13
`1.
`Dr. Moore fails to provide any optical design software analysis
`to support his opinion, which a POSITA at the time of the
`invention would have performed to evaluate prior art. .............13
`To the extent that Parulski is limited to miniature camera
`modules, modifications or adjustments would have been within
`the level of a POSITA to accommodate the teachings of
`Kawamura and Ogata in Parulski’s camera. .............................13
`III. DECLARATION ........................................................................................... 16
`IV. APPENDIX.................................................................................................... 17
`A. Kawamura Example 1 scaled by factor of 14.5 using ZEMAX .........17
`
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`B.
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`C.
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`D.
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`2.
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`3.
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`2.
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`Declaration of José Sasián, Ph.D. in support of
` Petitioner’s Reply in IPR2020-00906
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`I.
`
`INTRODUCTION
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`1.
`
`I am José Sasián, who previously submitted a declaration as APPL-
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`1021 in this proceeding. The terms of my engagement, my background,
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`qualifications and prior testimony, and the legal standards and claim constructions
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`I am applying are set forth in my previous CV and declaration. See APPL-1021. I
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`offer this declaration in reply to the Response the Patent Owner filed in this
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`proceeding. In forming my opinion, I have considered the materials noted in my
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`previous declaration, as well as the following additional materials:
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`(1) Dr. Moore’s Declaration, Ex. 2015;
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`(2)
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`Patent Owner’s Response, Paper No. 16;
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`(3) Rob Bates, The Modern Miniature Camera Objective: An
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`Evolutionary Design Path from the Landscape Lens, 2013 (“Bates”),
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`APPL-1040;
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`(4) Dr. Moore’s deposition transcript (“Moore deposition”), APPL-1041;
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`and
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`(5) Any additional documents discussed below.
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`Declaration of José Sasián, Ph.D. in support of
` Petitioner’s Reply in IPR2020-00906
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`II. OBVIOUSNESS
`A. Dr. Moore relies on an incorrect premise that my opinion requires
`Kawamura and Ogata to be used in a miniature camera module.
`
`2.
`
`As explained in my previous declaration, Parulski discloses using a
`
`1/2.5” sensor in its digital still camera modules, and a POSITA would have looked
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`to Kawamura and Ogata as lens designs that could have been scale to the
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`appropriate sizes for this sensors. APPL-1021, ¶¶ 38-39, 44-45. Dr. Moore believes
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`that “one skilled in the art in 2007 or later, looking for 1/2.5-inch sensors for a
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`digital system like Parulski would have looked to lenses designed for miniature
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`digital camera modules.” Ex. 2015, ¶¶ 48-49. The evidence does not support this
`
`belief.
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`3.
`
`Dr. Moore’s belief appears to be based on the chart from Galstain (Ex.
`
`2028) below, and the statement that “a camera module using a 1/2.5” 6 megapixel
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`image sensor would be considered a ‘miniature camera module,’ as would the
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`smaller camera modules likely to be used in Parulski’s mobile phone
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`embodiment:”
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`Ex. 2028, p.4. This chart, however, does not list a 1/2.5” sensor. Dr. Moore
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`therefore assumes that a 1/2.5” sensor would fall into the “Miniature Camera
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`Module” category (see Ex. 2015, ¶39), but I understand that there’s no evidence
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`provided by Dr. Moore or in the record to support that assumption. To the contrary,
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`Konno’s Example 2 lens system is a miniature camera module using a sensor with
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`an image height of 5.8 mm, which translates closely to a 1/1.7” sensor which is
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`also not listed in the miniature camera module group. See APPL-1015, Table 1.
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`4.
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`Dr. Moore’s assumption is incorrect. A 1/2.5” sensor has a diagonal
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`dimension of about 7.2 mm. See APPL-1029; APPL-1030. My previous
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`declaration cited two 1/2.5” image sensors available to POSITAs at the time with
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`pixel sizes of 0.00186 mm (see APPL-1029) and 0.00203 mm (see APPL-1030).
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`Declaration of José Sasián, Ph.D. in support of
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`APPL-1003, ¶¶ 38, 44. Based on the above chart from Galstain, a 1/2.5” sensor is
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`closer in both dimension and pixel size to a 1/2.3” sensor and supports a POSITA’s
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`understanding that a 1/2.5” sensor is better suited for “Digital Still Cameras”
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`category and not “Miniature Camera Modules” category. Further, Parulski refers to
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`a 100 mm equivalent focal length lens which for a 1/2.5” sensor would correspond
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`to a focal length of about 100 mm x 7 mm / 43 mm = 16.27 mm; this focal length
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`does not correspond to a miniature camera in the Galstein chart.
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`5.
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`Dr. Moore’s analysis then relies on the incorrect premise that
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`Kawamura and Ogata must be scaled for miniature camera modules to be
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`combined with Parulski. Ex. 2015, ¶¶ 68-107. Because there is no evidence
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`supporting Dr. Moore’s assumption that a 1/2.5” sensor is only suited for a
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`miniature camera module (e.g., Parulski Fig. 16), he fails to address my opinion
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`that a POSITA would have looked to scale Kawamura and Ogata for use in a
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`digital still camera (e.g., Parulski Fig. 2; Labaziewicz, Fig. 10D). Dr. Moore’s
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`opinion should therefore be disregarded because it is based on an inaccurate
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`assumption.
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`B. A POSITA would have considered the Kawamura and Ogata
`designs in selecting lenses for Parulski’s digital camera
`embodiment.
`
`6.
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`Dr. Moore cites several reasons that a POSITA “would not have been
`
`motivated to scale Kawamura for use in Parulski.” Ex. 2015, ¶¶ 68-103. Dr. Moore
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`Declaration of José Sasián, Ph.D. in support of
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`does not dispute that Parulski, Ogata, or Kawamura are all within the same field of
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`endeavor as the ’479 patent (which is not limited to a miniature camera module),
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`but rather believes a POSITA would have chosen a different lens for various
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`reasons. I disagree.
`
`1.
`
`Dr. Moore’s belief that a POSITA would not scale Kawamura
`and Ogata is based on the incorrect premise that the
`combination is limited to miniature camera modules.
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`7.
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`Dr. Moore believes that a POSITA would not have been motivated to
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`scale Kawamura as presented in my previous declaration because “[s]caling lens
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`designs by a large factor is not done in practice.” Ex. 2015, ¶¶ 70-79. This
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`argument fails to address the combination presented in the Petition because it
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`limits the inquiry to miniature camera modules, and does not consider a digital
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`camera embodiment.
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`8.
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`First, Dr. Moore cites the premise that “scaling a good conventional
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`lens design to a smaller size will often produce a design that is substantially
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`inferior for its intended purpose to designs that were specifically created to be used
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`as small lenses.” Ex. 2015, ¶70. This statement, however, cites no evidence for
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`support and is only directed to “small lenses,” for which Dr. Moore does not
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`define.
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`9.
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`Second, Dr. Moore cites several academic references but all of these
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`references address scaling a lens for a miniature camera module, not a digital
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`camera. Dr. Moore relies on Ex. 2029 for the proposition that “[a] traditional
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`objective lens can not be simply scaled down ….” Ex. 2029, p.1. But the
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`immediately preceding sentence limits this statement to “a miniature camera lens
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`module” (see Ex. 2029), and is therefore irrelevant to whether a POSITA would
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`have scaled Kawamura for a larger device like a digital camera. Additionally, lens
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`designers as a standard practice scale lenses, adjust, and optimize lenses.
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`10. Dr. Moore relies on Ex. 2034 for the proposition that “if the
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`conventional camera lens was simply scaled down to the same focal length of the
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`miniature lens, it would encounter many issues.” Ex. 2034, p.79. The miniature
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`lenses discussed in this reference, though, are specific to “mobile platform
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`electronics applications, such as cell phones and tablets,” not to larger devices like
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`a digital camera.
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`11. Patent Owner relies on Ex. 2033 for the proposition that “Scaling
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`down such a lens will result in a system that is unmanufacturable.” Ex. 2033, p.1.
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`But again, this reference is directed to “lenses for cell phone cameras” having
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`“typical lens specifications” of a 1/4” sensor and a total track length of about 5
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`mm. See Ex. 2033, p.3. The combination in my previous analysis, however, is a
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`digital camera with a 1/2.5” sensor and both of my scaled Kawamura and Ogata
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`lenses would have a total track length larger than 5 mm. See APPL-1003, ¶¶ 39, 45
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`(scaling the lenses to a TTL of about 15 mm and 7 mm respectively).
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`Declaration of José Sasián, Ph.D. in support of
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`12. Patent owner finally relies on Ex. 2027 for the proposition that “one
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`problem with the small scale of miniature lenses is that lens element thickness and
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`decenter errors can have a large impact by decreasing performance.” Ex. 2027,
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`p.192. But yet again, this is in reference to a “miniature lens with a focal length of
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`5 mm,” (Ex. 2027, p.192) not a digital camera with larger lenses as presented in
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`my previous analysis. APPL-1021, ¶¶ 39, 45.
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`13. Thus, none of the above evidence from Dr. Moore addresses the
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`combination of Parulski, Ogata, and Kawamura presented in the Petition, of a
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`digital camera as in Parulski Fig. 2 combined with Kawamura scaled to a total
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`track length of about 15 mm and Ogata scaled to about 7 mm. See APPL-1021, ¶¶
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`38-39, 44-45. Additionally, Exs. 2027, 2029, 2034, do not reflect the knowledge of
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`a POSITA as of the ’479 patent’s priority date in 2013 because they were
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`published in 2015 and 2019, and address miniature camera modules in these time
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`periods.
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`2.
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`Patent Owner’s list of miniature lens requirements should be
`rejected because they are based on improperly limiting
`Parulski to miniature camera modules using miniature lenses.
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`14. Dr. Moore alleges that a lens used with Parulski must satisfy a list of
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`miniature lens requirements including (1) an aspheric design with plastic elements,
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`(2) an aperture stop near the first lens element, and (3) a small F-Number between
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`2 and 3. Ex. 2015, ¶¶ 80-103. As discussed above, my previous analysis presents
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`Declaration of José Sasián, Ph.D. in support of
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`Parulski’s non-miniature cameras having non-miniature lenses. APPL-1021, ¶¶ 38-
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`39, 44-45. Because each of these alleged requirements is premised on Dr. Moore’s
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`assumption that Parulski is limited to miniature camera modules (see Ex. 2015,
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`¶39), these alleged miniature lens requirements are irrelevant and improperly
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`imposed.
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`15. Also, Dr. Moore’s assertion that a POSITA would have not have
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`considered Kawamura due to its F-number also fails because miniature cameras
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`modules with F-numbers similar to Kawamura and Ogata were known in the art,
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`for example, in the Konno reference. Compare APPL-1015, p.21 (wide F#=3 and
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`tele F#=4) with APPL-1026, 7:34-40 (wide F#=2.9) and APPL-1012, p.3 (tele
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`F#=4.1).
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`16. Finally, aspheric surfaces, plastics elements, the position of the stop
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`aperture, and the F-number are requirements highly dependent on application,
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`fabrication technology, production volume, and overall lens cost. For example, an
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`application that would require a small number of lenses to work in a harsh
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`environment (i.e., hundreds or even non-millions of lenses like in cell-phones)
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`would not have used neither plastic lenses that are not suited for the environment,
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`nor aspheric surfaces because of the high cost of such surfaces.
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`3.
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`Declaration of José Sasián, Ph.D. in support of
` Petitioner’s Reply in IPR2020-00906
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`A POSITA would have looked to Kawamura among other lens
`designs when considering how to implement Parulski's
`camera.
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`17. Dr. Moore also states that a POSITA would have considered
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`“hundreds of lens design examples for mobile phone lenses” for use in Parulski.
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`Ex. 2015. But, Dr. Moore fails to provide even a single example of a miniature
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`telephoto lens design that a POSITA would have looked to.
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`C.
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`Patent Owner’s analysis is incorrect because it is based on a
`POSITA’s understanding of technology in 1981 and incorrect
`understanding of ongoing relevance of older lens designs.
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`18. Dr. Moore’s belief that a POSITA would not have been motivated to
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`combine Kawamura and Ogata with Parulski is incorrectly based on alleged
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`technology in 1981, instead of evaluation and routine modification by a POSITA at
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`the time the ’479 patent was filed in 2013.
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`19. For example, Dr. Moore argues that “a POSITA in 2007 or in 2013
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`would not expect the Kawamura lens to be successful if scaled down for use in
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`Parulski,” because “in 1981 [] the computer simulation abilities to study and
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`reduce lens sensitivity were limited.” Ex. 2015, ¶¶ 78 (discussing lower computer
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`ability to optimize a lens design and more limited lens fabrication technology in
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`1981), ¶80 (discussing that the use of aspheric surfaces was not easily achieved in
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`1981). Dr. Moore reaffirmed during deposition his reliance on limitations of
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`computer-assisted lens design optimization and lens fabrication technology in 1981
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`Declaration of José Sasián, Ph.D. in support of
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`as reasons why POSITA would not have been motivated to use Kawamura’s
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`design in Parulski. APPL-1041, 70:18-71:12.
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`20. Additionally, Dr. Moore argues that in 2013, a POSITA “simply
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`would not have looked” to Kawamura’s 1981 design. Ex. 2015, ¶79. First, Dr.
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`Moore reasons that there were many developments in miniature lens design during
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`those thirty years. Ex. 2001, ¶79. But as explained above, Parulski is not limited to
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`miniature lenses. Second, Patent Owner appears to imply that designs from 1981
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`would be wholly outdated by 2013. Ex. 2021, ¶79. However, lens designs remain
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`relevant designs to a POSITA for many decades. APPL-1020, pp.359-366
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`(Textbook titled “Modern Lens Design” from 2005 including example telephoto
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`lens designs from 1950, 1977, and 1982). For example, Patent Owner’s U.S. Patent
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`9,568,712 included claims for a lens design it believed was novel and non-obvious
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`that I found to be anticipated by a 1968 patent. See IPR2018-01146, Paper 37, 29-
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`37. Another example is the Cooke triplet lens design form invented prior to 1900,
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`which has been reused many times thereafter and forms the basis of many early
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`miniature lenses developed in the 2000s.
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`21. Because Dr. Moore incorrectly relies on an POSITA’s knowledge of
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`the technology in 1981, he fails to consider the ongoing relevance of older lens
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`designs with modern lens design optimization, and fails to evaluate prior art as a
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`POSITA would have done at the time the ’479 Patent was filed. I therefore
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`Declaration of José Sasián, Ph.D. in support of
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`disagree with his argument that a POSITA would not have been motivated to
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`combine Kawamura and Parulski.
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`D. Lens design software analysis supports combining Parulski with
`Ogata and Kawamura.
`
`1.
`
`Dr. Moore fails to provide any optical design software
`analysis to support his opinion, which a POSITA at the time
`of the invention would have performed to evaluate prior art.
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`22. A POSITA in 2013, the priority date of the ’479 Patent, would have
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`performed lens design software analysis and formed its opinion based on the lens
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`design software. My previous declaration provided detailed lens design software
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`analysis, which confirms the viability of Kawamura’s and Ogata’s lens designs in
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`Parulski and reinforces the Petition’s motivation to use them. APPL-1021, ¶¶ 50-
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`55, 61-65, Appendix; infra, part IV.A (Appendix).
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`2.
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`To the extent that Parulski is limited to miniature camera
`modules, modifications or adjustments would have been
`within the level of a POSITA to accommodate the teachings of
`Kawamura and Ogata in Parulski’s camera.
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`23. Dr. Moore believes that there are several requirements for a miniature
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`telephoto lens in Parulski including (1) a scaling factor of 10x or more for
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`Kawamura, (2) an aspheric design with plastic elements, (3) an aperture stop near
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`the first lens element, (4) a small F-Number between 2 and 3. Ex. 2015, ¶¶ 80-102.
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`24. To the extent that scaling by a large factor and/or miniature lenses are
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`required to combine Kawamura and Ogata with Parulski, modifications or
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`adjustments would have been within the level of a POSITA, as shown in the
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`analysis of, for example, Kawamura in Appendix.A. Because these modifications
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`or adjustments would have been within the level of a POSITA, they would not
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`have dissuaded a POSITA from adjusting and combining Kawamura with Parulski
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`to yield a miniature camera system.
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`25. The example in Appendix.A scales Kawamura’s Example 1 to fit a
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`1/3” sensor with a full angle FOV of 24.6 degrees using the steps below. At each
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`step described below, the lens is reoptimized, and lens element thickness is
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`adjusted if necessary to avoid negative thickness at the lens edge. While the
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`example below uses Kawamura, a POSITA would have recognized that Ogata
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`could have been similarly adjusted to yield a miniaturized form-factor.
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`26. Step 1: The Kawamura lens data is entered into ZEMAX and
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`optimized for minimum wavefront error, using as variables the radii of curvature
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`but maintaining the same element focal length to keep the lens structure taught by
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`Kawamura. Distortion aberration is controlled to be the same as in the original
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`lens.
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`27. Step 2: Using standard plastic material, E48R and OKP4, the model
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`glasses in Kawamura are substituted.
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`28. Step 3: The aperture stop is moved to the second lens but allowing the
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`surfaces to be aspheric surface as conics.
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`29. Step 4: The aperture stop diameter is increased to a F# of 2.8 so that
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`the lens may cast brighter images.
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`30. Step 5: The lens is scaled by a factor of 14.5 for a 1/3” sensor with a
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`diagonal of 6 mm. The field of view is the same as in the original lens +/- 12.3
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`degrees.
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`31. These steps are basic knowledge that a POSITA would have. For
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`example, Mr. Rob Bates, who was my student, wrote a technical paper, titled “The
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`modern miniature camera objective: an evolutionary design path from the
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`landscape lens,” which illustrates the level of skill of a POSITA at the time of the
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`asserted patent and explains steps for designing a miniature camera from a
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`conventional lens design. See APPL-1041, Bates. See also APPL-1022 (ZEMAX
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`User’s Manual) (describing performing modifications of various lens parameters
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`using ZEMAX, e.g., optimization at pages 231 and 471, model glasses at pages
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`263 and 587, glass catalogue at pages 203 and 204, F number at page 56, thickness
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`at page 74, surface stop at page 75, scaling at pages 254-355, and aspheric
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`surfaces/conics at page 317).
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`Declaration of José Sasián, Ph.D. in support of
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`III. DECLARATION
`32.
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`I declare that all statements made herein of my own knowledge are
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`true, that all statements made on information and belief are believed to be true, and
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`that these statements were made with knowledge that willful false statements so
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`made are punishable by fine or imprisonment, or both, under section 1001 of Title
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`18 of the United States Code.
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`Dated: May 7, 2021
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`_______________________
`José Sasián
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`IV. APPENDIX
`A. Kawamura Example 1 scaled by factor of 14.5 using ZEMAX
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`Kawamura Example 1 is optimized for plastic elements, an aperture stop near the
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`front, a small F/# of 2.8, and a scaling factor of 14.5 (Focal Length=13.79 mm,
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`TTL=13.49 mm, full angle FOV=24.6°).
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