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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`
`APPLE INC.,
`Petitioner
`v.
`COREPHOTONICS, LTD.,
`Patent Owner
`———————
`
`IPR2020-00906
`U.S. Patent 10,225,479
`_______________
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`
`PETITIONER’S REPLY
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`Petitioner’s Reply
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` IPR2020-00906 (Patent No. 10,225,479)
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`Table of Contents
`
`I.
`II.
`
`Introduction ...................................................................................................... 1
`Claim Construction .......................................................................................... 1
`A.
`“to find translations between matching points in the images to
`calculate depth information and to create a fused image suited for
`portrait photos” (claim 19) .................................................................... 1
`III. Claims 19 and 20 are obvious over the combination of Parulski, Ogata,
`Kawamura, and Soga ....................................................................................... 4
`A.
`Patent Owner does not dispute that “a camera controller configured
`to … to find translations between matching point in the images to
`calculate depth information and to create a fused image suited for
`portrait photos” is satisfied under Petitioner’s construction. ............... 5
`Patent Owner relies on an incorrect premise that Ground 1 in the
`Petition requires Kawamura and Ogata to be used in a miniature
`camera module. ..................................................................................... 5
`A POSITA would have considered the Kawamura and Ogata
`designs in selecting lenses for Parulski’s digital camera. ..................... 8
`1.
`A POSITA would have scaled Kawamura and Ogata for a
`digital camera, not a miniature camera module. ......................... 8
`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. 11
`A POSITA would have looked to Kawamura among other
`lens designs when considering how to implement Parulski's
`camera. ......................................................................................12
`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. ................13
`Lens design software analysis supports combining Parulski with
`Ogata and Kawamura. .........................................................................15
`1.
`Patent Owner 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. ..15
`
`B.
`
`C.
`
`2.
`
`3.
`
`D.
`
`E.
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`Petitioner’s Reply
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` IPR2020-00906 (Patent No. 10,225,479)
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`2.
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`
`
`
`V.
`
`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. ........................15
`IV. Claims 21 and 22 are obvious over the combination of Parulski, Ogata,
`Kawamura, Soga, and Morgan-Mar. .............................................................16
`Secondary Considerations .............................................................................17
`A. No nexus. .............................................................................................18
`1.
`Patent Owner is not entitled to a presumption of nexus. ..........18
`2.
`Patent Owner fails to prove nexus. ...........................................19
`Praise/licensing lacks nexus and is self-serving. ................................22
`B.
`Patent Owner did not show commercial success. ...............................24
`C.
`D. No failure of others..............................................................................24
`E.
`No evidence of copying. ......................................................................25
`VI. Conclusion .....................................................................................................26
`VII. Certificate of Word Count .............................................................................27
`CERTIFICATE OF SERVICE ............................................................................28
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`Petitioner’s Reply
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` IPR2020-00906 (Patent No. 10,225,479)
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`PETITIONER’S EXHIBIT LIST
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`Updated: May 7, 2021
`
`APPL-1001 U.S. Patent No. 10,225,479 to Shabtay et al. (the “’479 Patent”)
`
`APPL-1002 Prosecution history of the ’479 Patent (the “’242 App”)
`
`APPL-1003 Declaration of Dr. Fredo Durand Ph.D.
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`APPL-1004 CV of Dr. Fredo Durand
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`APPL-1005 U.S. Patent No. 7,859,588 to Parulski et al. (“Parulski”)
`
`APPL-1006
`
`JP Patent Application Publication No. 2007-259108 to Soga
`(“Soga”), English Translation, Declaration, and Original
`
`APPL-1007
`
`Jacobs et al., “Focal Stack Compositing for Depth of Field
`Control,” Stanford Computer Graphics Laboratory Technical
`Report 2012-1
`
`APPL-1008 Prosecution history Morgan-Mar
`
`APPL-1009 U.S. Patent No. 8,989,517 to Morgan-Mar et al. (“Morgan-Mar”)
`
`APPL-1010 PCT Publication No. WO2013140359 to Shalon et al. (“Shalon”)
`APPL-1011 U.S. Patent Application Publication No. 2008/0030592 to Border
`et al. (“Border”)
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`APPL-1012
`
`JPS5862609A to Kawamura (“Kawamura”)
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`APPL-1013 Used in co-filed Petition
`APPL-1014 U.S. Patent No. 6,259,863 to Maruyama (“Maruyama”)
`JP Pub. No. 2013-106289 to Konno et al. (“Konno”), Certified
`English translation and Original
`APPL-1016 Ralph E. Jacobson et al., The Manual of Photography:
`photographic and digital imaging, 9th Edition, 2000 (“Jacobson”)
`
`APPL-1015
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`APPL-1017 U.S. Patent App. Pub. No. 2010/0321511 to Koskinen et al.
`(“Koskinen”)
`APPL-1018 U.S. Patent No. 7,206,136 to Labaziewicz et al. (“Labaziewicz”)
`APPL-1019 Milton Katz, INTRODUCTION TO GEOMETRICAL OPTICS
`(2002) (“Katz”)
`APPL-1020 Warren J. Smith, MODERN LENS DESIGN (1992) (“Smith”)
`
`APPL-1021 Declaration of Dr. Jose Sasián, Ph.D.
`
`APPL-1022
`
`ZEMAX Development Corporation, ZEMAX Optical Design
`Program User’s Manual, February 14, 2011 (“ZEMAX User’s
`Manual”)
`
`APPL-1023 Used in co-filed Petition
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`APPL-1024 Used in co-filed Petition
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`APPL-1025 Used in co-filed Petition
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`APPL-1026 U.S. Patent No. 5,546,236 to Ogata et al. (“Ogata”)
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`APPL-1027 Used in co-filed Petition
`APPL-1028 Bae et al., “Defocus Magnification,” EUROGRAPHICS 2007,
`(“Bae”)
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`APPL-1029 Specification sheet for Sony ICX629 image sensor (“ICX629”)
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`APPL-1030 Specification sheet for Sony ICX624 image sensor (“ICX624”)
`
`APPL-1031 Used in co-filed Petition
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`APPL-1032 Used in co-filed Petition
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`APPL-1033 Product manual for Kodak Easyshare V610
`
`APPL-1034 Used in co-filed Petition
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`APPL-1035 Robert E. Fischer et al., OPTICAL SYSTEM DESIGN (2008)
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`Petitioner’s Reply
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`APPL-1036 Email from Patent Owner’s counsel authorizing electronic
`service
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`APPL-1037 Deposition transcript of John Hart, Ph.D., April 29, 2021
`APPL-1038 Declaration of Dr. Fredo Durand, Ph.D. in support of Petitioner’s
`Reply
`APPL-1039 Declaration of Dr. José Sasián, Ph.D. in support of Petitioner’s
`Reply
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`APPL-1040
`
`Rob Bates, The Modern Miniature Camera Objective: An
`Evolutionary Design Path from the Landscape Lens, 2013
`(“Bates”)
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`APPL-1041 Deposition transcript of Duncan Moore, Ph.D., March 11, 2021
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`I.
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`Petitioner’s Reply
` IPR2020-00906 (Patent No. 10,225,479)
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`Introduction
`For the reasons discussed in the Petition and elaborated below, the
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`challenged claims of the ’479 Patent are unpatentable. Patent Owner’s arguments
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`about the various combinations are misleading because they limit Parulski’s
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`implementation to miniature camera modules. Additionally, Patent Owner’s
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`proposed construction imports unsupported limitations into claim 19 to overcome
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`clear disclosures from the specification setting forth the proper claim scope.
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`II. Claim Construction
`“to find translations between matching points in the images to
`A.
`calculate depth information and to create a fused image suited for
`portrait photos” (claim 19)
`
` Patent Owner’s construction improperly reads the entire limitation as one
`
`process where “translations between matching points in the images to calculate depth
`
`information” is used to “create a fused image suited for portrait photos.” See
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`Response at 10.
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`Patent Owner first argues that this construction is the plain and ordinary
`
`meaning based on English grammar rules. Id. at 10-11. This argument fails because
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`the limitation requires a camera controller “configured” to perform three functions,
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`numbered below:
`
`a camera controller … configured [1] to control the AF
`mechanisms, [2] to process the Wide and Tele images to find
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`translations between matching points in the images to calculate
`depth information and [3] to create a fused image suited for
`portrait photos, the fused image having a DOF shallower than
`DOFT and having a blurred background.
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`APPL-1001, claim 19 (annotated). The omission of the Oxford comma before the
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`“and” in the three-item list above is consistent with other claims in the ’479 patent.
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`E.g., id., claim 20 (omitting Oxford comma before the “fifth lens element— “a first
`
`lens element …, a second lens element …, a fourth lens element with negative power
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`and a fifth lens element”). If the “and” connects the “to calculate” and the “to create”,
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`as Patent Owner argues (Response at 10-11), then the list of “configured” functions
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`performed by the camera controller has no conjunction, and forms an incomplete list.
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`Thus, Petitioner’s construction properly interprets the plain meaning of the claim as a
`
`list of three functions that the camera controller is “configured” to perform.
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`Second, Patent Owner asserts that the process for “‘creat[ing] a fused image’ is
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`part of the broader ‘to process the Wide and Tele’” and should therefore include all of
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`the steps in between these two parts. Id., at 11-12. As shown above, this is
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`grammatically incorrect.
`
`Neither of these address the specifications lack of support for “find[ing]
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`translations between matching points to calculate depth information” that is then
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`used to “create a fused image.” See Petition at 9. Rather, the specification of the
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`Petitioner’s Reply
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`’479 patent only describes the process of “find[ing] translation between matching
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`points … to calculate depth information” for use in faster focusing:
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`The transformation coefficient includes the translation
`between matching points in the two images. … Different
`translations will result in a different number of pixel
`movements between matching points in the images. This
`movement can be translated into depth and the depth can
`be translated into an AF position. This enables to set the
`AF position by only analyzing two images (Wide &
`Tele). The result is fast focusing.
`
`APPL-1001, 12:11-15; see Petition at 9. Adopting Patent Owner’s construction reads
`
`out “fast focusing,” the only embodiment in the specification that calculates and uses
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`depth information. Oatey Co. v. IPS Corp., 514 F. 3d 1271, 1277 (Fed. Cir. 2008)
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`(“We normally do not interpret claim terms in a way that excludes embodiments
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`disclosed in the specification.”); Verizon Servs. Corp. v. Vonage Holdings Corp., 503
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`F.3d 1295, 1305 (Fed. Cir. 2007) (rejecting proposed claim interpretation that would
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`exclude disclosed examples in the specification); Invitrogen Corp. v. Biocrest Mfg.,
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`L.P., 327 F.3d 1364, 1369 (Fed. Cir. 2003) (finding district court's claim construction
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`erroneously excluded an embodiment described in an example in the specification,
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`where the prosecution history showed no such disavowal of claim scope).
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`Petitioner’s Reply
` IPR2020-00906 (Patent No. 10,225,479)
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`Patent Owner does not dispute that creating a fused image using calculated
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`depth information is not described anywhere in the specification. See Response at 10-
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`11; Petition at 9; APPL-1038, ¶13; APPL-1001, 7:44-59, 9:39-60. For example, Fig. 5
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`describes an algorithm ending with fusion step 512 where “the decision output, re-
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`sampled Tele image and the Wide image are fused into a single zoom image.” Id.,
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`9:58-60. This step notably excludes calculating depth information or using calculated
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`depth information.
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`Petitioner’s construction is the only one that encompasses the depth calculation
`
`and use described in the specification, finds written description support in the
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`specification, and properly divides this limitation into the two distinct functions
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`described in the specification. Nystrom v. TREX Co., Inc., 424 F. 3d 1136, 1145-46
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`(Fed. Cir. 2005) (A party “is not entitled to a claim construction divorced from the
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`context of the written description and prosecution history.”).
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`III. Claims 19 and 20 are obvious over the combination of Parulski, Ogata,
`Kawamura, and Soga
`Patent Owner’s arguments are based on an improper claim construction
`
`(discussed above) and incorrectly premised on Parulski’s digital camera being
`
`limited to a miniature camera module allegedly requiring miniature lenses.
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`Irrelevant evidence like computer simulation and lens fabrication technology in
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`Petitioner’s Reply
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`1981 and opinion testimony unsupported by any underlying lens design software
`
`analysis also sink Patent Owner’s arguments.
`
`A.
`
`Patent Owner does not dispute that “a camera controller
`configured to … to find translations between matching point in the
`images to calculate depth information and to create a fused image
`suited for portrait photos” is satisfied under Petitioner’s
`construction.
`
`Patent Owner concedes that this limitation is satisfied as discussed in
`
`Ground 1 under Petitioner’s construction of this limitation. See Response at 65;
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`APPL-1038, ¶42. Because Patent Owner’s construction of this term is unsupported
`
`by the specification as discussed above, this limitation is disclosed by the
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`combination of Parulski and Soga as set forth in the Petition. See Petition at 54-57;
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`APPL-1003, pp.63-69; APPL-1038, ¶42.
`
`B.
`
`Patent Owner relies on an incorrect premise that Ground 1 in the
`Petition requires Kawamura and Ogata to be used in a miniature
`camera module.
`
`The Petition explains that Parulski can use a 1/2.5” sensor in its digital still
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`camera, and a POSITA would have looked to Kawamura’s and Ogata’s lens
`
`designs scaled to appropriate sizes for these sensors. Petition at 19-20, 29-30.
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`Patent Owner first argues that “one skilled in the art in 2007 or later, looking for
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`1/2.5-inch sensors for a digital system like Parulski would have looked to lenses
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`designed for miniature digital camera modules.” Response at 39; Ex. 2015, ¶¶
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`38-39. This is not supported by the evidence. APPL-1039, ¶2.
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`Patent Owner cites the chart from Galstain to support its position (Ex. 2015,
`
`¶39) but a 1/2.5” sensor is not even listed:
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`
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`Ex. 2028, p.4; Response at 39; Ex. 2015, ¶¶ 38-39. Dr. Moore’s belief is therefore
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`an unsupported assumption that a 1/2.5” sensor would fall into the “Miniature
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`Camera Module” category, which it does not. APPL-1039, ¶3. 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. Id.; see APPL-1015, Table 1.
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`A 1/2.5” sensor has a diagonal dimension of about 7.2 mm. See APPL-1029;
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`APPL-1030. The Petition cites two 1/2.5” image sensors available to POSITAs at
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`the time with pixel sizes of 0.00186 mm (see APPL-1029) and 0.00203 mm (see
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`APPL-1030). Petition at 20, 27. Based on the above chart from Galstain, a 1/2.5”
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`sensor is closer in both dimension and pixel size to a 1/2.3” sensor and supports a
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`POSITA’s understanding that a 1/2.5” sensor was better suited for “Digital Still
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`Cameras.” not “Miniature Camera Modules” in 2013. APPL-1039, ¶4. Further,
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`Parulski refers to a 100 mm equivalent focal length lens which for a 1/2.5” sensor
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`would correspond to a focal length of about 100 mm x 7 mm / 43 mm = 16.27 mm;
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`this focal length does not correspond to a miniature camera in the Galstein chart. Id.
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`Based on this this incorrect premise, Patent Owner argues that Kawamura
`
`and Ogata must be scaled to fit in miniature camera module to be combinable with
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`Parulski. See Response at 39-59; Ex. 2015, ¶¶ 68-107. Because there is no
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`evidence supporting Dr. Moore’s assumption that a 1/2.5” sensor is only suited for
`
`a miniature camera module (e.g., Parulski Fig. 16), Patent Owner fails to rebut the
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`Petition’s showing that a POSITA would have looked to scale Kawamura and
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`Ogata for use in a digital still camera (e.g., Parulski Fig. 2; Labaziewicz, Fig. 10D).
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`APPL-1039, ¶5. For this reason alone, Dr. Moore’s opinion should be disregarded
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`as being based on an inaccurate assumption. Id.
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`Petitioner’s Reply
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`C. A POSITA would have considered the Kawamura and Ogata
`designs in selecting lenses for Parulski’s digital camera.
`
`Patent Owner provides several reasons why a POSITA “would not have
`
`been motivated to scale Kawamura for use in Parulski,” none of which are relevant
`
`to a proper obviousness analysis. First, Patent Owner cites the 26-year gap and
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`“substantial improvements” in that time, but neither are relevant to the first
`
`Graham factor, determining “the scope and content of the prior art.” See Graham
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`v. John Deere Co., 383 U.S. 1, 17 (1966). The only relevant question here is “if the
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`reference is within the field of the inventor’s endeavor.” Bausch & Lomb, Inc. v.
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`Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 449 (Fed. Cir. 1986). Patent Owner
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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. APPL-1039, ¶6. And, Patent Owner’s assertions about
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`the age of the references or improvements in the art are not relevant to an
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`obviousness inquiry.
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`1.
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`A POSITA would have scaled Kawamura and Ogata for a
`digital camera, not a miniature camera module.
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`Patent Owner argues that a POSITA would not have been motivated to scale
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`Kawamura as presented in the Petition because “[s]caling lens designs by a large
`
`factor is not done in practice.” Response at 40. This argument fails because it
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`Petitioner’s Reply
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`impermissibly limits the implementation of Parulski to miniature camera modules.
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`APPL-1039, ¶7.
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`First, Patent Owner cites the premise that “scaling a good conventional lens
`
`design to a smaller size will often produce a design that is substantially inferior for
`
`its intended purpose to designs that were specifically created to be used as small
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`lenses.” Response at 41; Ex. 2015, ¶70. This statement cites to nothing, and is
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`based on Dr. Moore’s assumption that Parulski is limited to miniature camera
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`modules. APPL-1039, ¶8; see Rohm and Haas Co. v. Brotech Corp., 127 F. 3d
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`1089, 1092 (Fed. Cir. 1997) (“Nothing in the rules or in our jurisprudence requires
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`the fact finder to credit the unsupported assertions of an expert witness.”).
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`Second, Patent Owner cites several academic references that each describe
`
`lens scaling issues for miniature camera modules, not larger digital cameras.
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`APPL-1039, ¶9. Patent Owner relies on Ex. 2029 for the proposition that “[a]
`
`traditional objective lens can not be simply scaled down ….” Response at 41; Ex.
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`2029, p.1. But the immediately preceding sentence limits this statement to “a
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`miniature camera lens module” (see Ex. 2029), which is irrelevant to whether a
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`POSITA would have scaled Kawamura for a larger device like a digital camera.
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`APPL-1039, ¶9. Additionally, lens designers as a standard practice scale lenses,
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`adjust, and optimize lenses. Id.
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`Petitioner’s Reply
` IPR2020-00906 (Patent No. 10,225,479)
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`Patent Owner relies on Ex. 2028 to support its assumption that a POSITA
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`would implement Parulski using a 1/2.5” image sensor in a miniature camera
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`module. Again, this assumption is unsupported because the chart Dr. Moore cites
`
`does not list a 1/2.5” sensor in the “Miniature Camera Module” category. APPL-
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`1039, ¶¶ 3-4.
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`Patent Owner relies on Ex. 2034 for the proposition that “if the conventional
`
`camera lens was simply scaled down to the same focal length of the miniature lens,
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`it would encounter many issues.” Response at 42; Ex. 2034, p.79. The miniature
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`lenses discussed in this reference, though, are specific to “mobile platform
`
`electronics applications, such as cell phones and tablets,” not to larger devices like
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`a digital camera. APPL-1039, ¶10.
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`Patent Owner relies on Ex. 2033 for the proposition that “Scaling down such
`
`a lens will result in a system that is unmanufacturable.” Response at 43; Ex. 2033,
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`p.1. 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 the Petition, however, is a digital
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`camera with a 1/2.5” sensor and both Kawamura and Ogata being scaled to larger
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`than 5 mm. See Petition at 41, 44 (scaling the lenses to 15 mm and 7 mm
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`respectively); APPL-1039, ¶11.
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`Petitioner’s Reply
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`Patent owner finally relies on Ex. 2027 for the proposition that “one problem
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`with the small scale of miniature lenses is that lens element thickness and decenter
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`errors can have a large impact by decreasing performance.” Response at 44; Ex.
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`2027, p.192. But yet again, this is in reference to a “miniature lens with a focal
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`length of 5 mm,” (Ex. 2027, p.192) not a digital camera with larger lenses as
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`presented in the Petition. See Petition at 41, 44; APPL-1039, ¶12.
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`Thus, Patent Owner’s evidence fails to address the combination of Parulski,
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`Ogata, and Kawamura implemented in a digital camera, as in Parulski Fig. 2 where
`
`Kawamura is scaled to have a total track length of about 15 mm and Ogata is
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`scaled to about 7 mm. See Petition at 39, 41, 44. Additionally, Exs. 2027, 2029,
`
`2034, do not reflect the knowledge of a POSITA as of the ’479 patent’s priority
`
`date in 2013 because they were published in 2015 and 2019, and address miniature
`
`camera modules in these time periods. APPL-1021, ¶13.
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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.
`
`Patent Owner alleges that a miniature lens used with Parulski must satisfy
`
`requirements including (1) an aspheric design with plastic elements, (2) an aperture
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`stop near the first lens element, and (3) a small F-Number between 2 and 3.
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`Response at 46-57. Each “requirement,” however, is premised on Patent Owner’s
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`Petitioner’s Reply
` IPR2020-00906 (Patent No. 10,225,479)
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`assumption, that Parulski is limited to miniature camera modules. See Ex. 2015,
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`¶39. These requirements are irrelevant and improperly imposed. APPL-1039, ¶14.
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`Moreover, Patent Owner’s assertion that a POSITA would have not have
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`considered Kawamura due to its F-number (Response at 55-57) also fails because
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`miniature cameras modules with f-numbers similar to Kawamura and Ogata were
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`known in the art, for example, in the Konno reference. APPL-1039, ¶15; compare
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`APPL-1015, p.21 (wide F#=3 and tele F#=4) with APPL-1026, 7:34-40 (wide
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`F#=2.9) and APPL-1012, p.3 (tele F#=4.1).
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`3.
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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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`Patent Owner argues that “a POSITA would have looked to one of the
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`hundreds of known miniature lens designs when looking for a lens to use in
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`Parulski,” and therefore a POSITA would not have looked to Kawamura’s non-
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`miniature design. Response, 2-3, 45. This argument fails because it is again
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`incorrectly premised on Parulski requiring a miniature lens. APPL-1039, ¶17.
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`The argument that a POSITA would have considered “hundreds of lens
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`design examples for mobile phone lenses” for use in Parulski (Response at 45) is
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`also unsupported because Patent Owner fail to provide even a single example of a
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`miniature telephoto lens design that a POSITA would have looked to. APPL-1039,
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`Petitioner’s Reply
` IPR2020-00906 (Patent No. 10,225,479)
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`¶17; see APPL-1041, 128:5-22 (Dr. Moore admitting that he does not know any
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`reference providing a miniature telephoto lens design on or before 2013).
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`D.
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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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`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between
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`the subject matter sought to be patented and the prior art are such that the subject
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`matter as a whole would have been obvious to a person of ordinary skill in the art
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`at the time the invention was made. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
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`406 (2007). Patent Owner’s argument that a POSITA would not have been
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`motivated to combine Kawamura and Ogata with Parulski is incorrectly based on
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`alleged technology in 1981, instead of evaluation and routine modification by a
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`POSITA at the time the invention was made as required by KSR.
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`For example, Patent Owner 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.” Response, 44; see also Response, 24-25
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`(discussing lower computer ability to optimize a lens design and more limited lens
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`fabrication technology in 1981); Response, 46 (discussing that the use of aspheric
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`surfaces was not easily achieved in 1981). Dr. Moore reaffirmed during deposition
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`Petitioner’s Reply
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`his reliance on limitations of computer-assisted lens design optimization and lens
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`fabrication technology in 1981 as reasons why POSITA would not have been
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`motivated to use Kawamura’s design in Parulski. APPL-1041, 70:18-71:12.
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`Additionally, Patent Owner argues that in 2013, a POSITA “simply would
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`not have looked” to Kawamura’s 1981 design. Response at 45. First, Patent Owner
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`argues that there were many developments in miniature lens design during those
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`thirty years. Id. But as explained above, Parulski is not limited to miniature lenses.
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`Second, Patent Owner implies that designs from 1981 would be wholly outdated
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`by 2013. Id. However, lens designs remain relevant to a POSITA for many
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`decades. APPL-1039, ¶20; APPL-1020, pp.359-366 (Textbook titled “Modern
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`Lens Design” from 2005 including example telephoto lens designs from 1950,
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`1977, and 1982). Indeed, Patent Owner’s U.S. Patent 9,568,712 included claims
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`for a lens design it believed was novel and non-obvious that were invalidated as
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`anticipated by a 1968 patent. IPR2018-01146, Paper 37, 29-37.
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`Patent Owner’s reliance on an POSITA’s knowledge of the technology in
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`1981 fails to consider the ongoing relevance of older lens designs with modern lens
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`design optimization, and therefore fails to evaluate prior art as a POSITA would
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`have done at the time the invention was made. APPL-1039, ¶21. This argument
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`Petitioner’s Reply
` IPR2020-00906 (Patent No. 10,225,479)
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`that a POSITA would not have been motivated to combine Kawamura and Parulski
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`should be rejected. Id.
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`E.
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`Lens design software analysis supports combining Parulski with
`Ogata and Kawamura.
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`1.
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`Patent Owner 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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`A POSITA in 2013 would have performed lens design software analysis and
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`formed its opinion based on the lens design software. APPL-1039, ¶22. Petitioner
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`and Dr. Sasián have provided detailed lens design software analysis, which
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`confirms the viability of Kawamura’s and Ogata’s lens designs in Parulski and
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`reinforces the Petition’s motivation to use same. Petition at 21-24, 28-30; APPL-
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`1021, ¶¶ 50-55, 61-65, Appendix; APPL-1039, ¶22, 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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`As discussed in III.C.3, Patent Owner’s list of miniature lens requirements
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`for incorporating lenses in Parulski should be rejected. However, to the extent that
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`miniaturized lenses would have been required for combining Kawamura and Ogata
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`with Parulski, Dr. Sasián’s detailed analysis (APPL-1039, ¶ 25-31) shows how a
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`POSITA could have used lens design software to modify and adjust an older lens
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`Petitioner’s Reply
` IPR2020-00906 (Patent No. 10,225,479)
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`design into a miniaturized version. APPL-1039, ¶¶ 24-31, Appendix.B; APPL-
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`1039, ¶26-31 (explaining steps for designing a miniature camera from a
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`conventional lens design); APPL-1009, pp. 56, 74-75, 203-204, 231, 254-355, 471,
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`587 (describing performing optimization and modification of lens parameters using
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`ZEMAX). Because these modifications or adjustments were within the skill of a
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`POSITA, they would not have dissuaded a POSITA from making the combination.
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`APPL-1039, ¶¶ 24-25.
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`IV. Claims 21 and 22 are obvious over the combination of Parulski, Ogata,
`Kawamura, Soga, and Morgan-Mar.
`Patent Owner argues that a POSITA would not have combined the teachings
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`of Parulski and Morgan-Mar because “they approach the problem from
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`incompatible directions” and “[a] POSITA would not have looked to the
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`significant additional processing burden needed for constructing a range map when
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`a more robust dual lens stereo correspondence was already available in Parulski.”
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`Response at 67-68.
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`Patent Owner misses the point of the combination. Nowhere does the
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`Petition rely on Morgan-Mar’s method (e.g., Fig. 5) for obtaining an image with a
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`bokeh effect. Rather, the Petition relies on Morgan-Mar for its teaching of the
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`depth of field range necessary to mimic an image captured with a DSLR lens with
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`a focal length between 50-80 mm. See Petition at 69-74. And, as shown in the
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`Petitioner’s Reply
` IPR2020-00906 (Patent No. 10,225,479)
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`Petition, a POSITA would have relied on Morgan-Mar’s teachings to set the focus
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`distances for the focused and blurred capture stages so that the resulting image in
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`Soga has an output DOF of 200-500 mm, the range taught by Morgan-Mar to
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`mimic a 50-80 mm DSLR lens. Id.
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`Patent Owner’s argument should therefore be disregarded because it fails to
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`address the combination as set forth in the Petition and relies on an improper
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`bodily incorporation of Morgan-Mar’s method with Parulski while making no
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`mention of the combination of Parulski and Soga or Soga’s method being similar
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`to Morgan-Mar’s capturing of “two images of the scene with different camera
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`parameters.” APPL-1009, Abstract; APPL-1038, ¶45.
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`V.
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`Secondary Considerations
`Patent Owner’s evidence of secondary considerations is not entitled to any
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`weight. There is no nexus between Patent Owner’s evidence and the challenged
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`claims. Even if there were, the evidence is insufficient to overcome Petitioner’s
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`strong showing of obviousness. Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310,
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`1316 (Fed. Cir. 2008). The combinations presented in the Petition represen