Paper No. 33
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`____________
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`____________
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`____________
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`____________
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`TABLE OF CONTENTS
`
`“to find translations between matching points in the images to
`calculate depth information and to create a fused image suited for
`
`INTRODUCTION .................................................................. 1
`I.
`CLAIM CONSTRUCTION ..................................................... 2
`II.
`A.
`portrait photos” (claim 19) .............................................................. 2
`III. PATENTABILITY OF CHALLENGED CLAIMS .................... 4
`A.
`Parulski, Ogata, Kawamura, and Soga (Ground 1) ......................... 4
`1.
`Are Called “Miniature” or Not .................................................. 4
`2.
`“Miniature” in the Art ................................................................ 7
`3.
`Decades Later Is Highly Relevant ........................................... 10
`4.
`Disregarded .............................................................................. 13
`B.
`Parulski, Ogata, Kawamura, Soga, and Morgan-Mar (Ground 2) 14
`C.
` ....................................................................................................... 14
`IV. CONCLUSION .................................................................... 16
`
`Claims 19 and 20 Are Not Obvious Over the Combination of
`
`A POSITA Would Recognize Apple’s Scaled Lenses to be
`Unmanufacturable and Otherwise Unsuitable, Whether They
`
`Apple’s Scaled Lenses Most Certainly Would Be Considered
`
`The Differences Between Kawamura’s 1981 Large-Lens
`Approach and the Approaches Actually Used in Small-Lenses
`
`Dr. Sasián’s Untimely New Lens Design Should Be
`
`Claims 21 and 22 Are Not Obvious Over the Combination of
`
`Secondary Considerations / Objective Indicia of Non-Obviousness
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`Exhibit No.
`2001
`2002
`2003
`2004
`
`2005
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`2006
`
`2007
`2008
`2009
`2010
`2011
`2012
`2013
`2014
`
`2015
`2016
`2017
`2018
`2019
`2020
`2021
`2022
`2023
`2024
`2025
`2026
`2027
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`Patent Owner’s Exhibit List
`
`
`Description
`Declaration of John C. Hart, Ph.D.
`Fredo Durand, Presentation Titled “Photography 101”
`Curriculum Vitae of John C. Hart, Ph.D.
`Complaint for Patent Infringement, Dkt. No. 1, Case No.
`19-cv-4809 (United States District Court, Northern Dis-
`trict of California)
`Answer to Complaint for Patent Infringement, Dkt. No.
`17, Case No. 19-cv-4809 (United States District Court,
`Northern District of California)
`Corephotonics Proposal: “Dual Aperture Image Fusion
`Technology, Proposed Engagement Framework” (June 22,
`2014)
`Email chain with emails dating from July and August 2014
`Email chain with emails dating from March 2015
`Email dated December 21, 2015
`Email chain with emails dating from August 2016
`Email dated May 23, 2013
`Email dated May 23, 2013
`Declaration of Eran Kali
`Transcript of January 21, 2021 Video-Recorded Deposi-
`tion of Fredo Durand, Ph.D.
`Declaration of Duncan Moore, Ph.D.
`Rudolf Kingslake, “Optics in Photography” (1992)
`Curriculum Vitae of Duncan Moore, Ph.D.
`Email chain with emails dating from June and July 2013
`Email chain with emails dating from June and July 2013
`Email chain with emails dating from October 2013
`Technology Evaluation Agreement dated August 8, 2013
`Email chain with emails dating from September 18, 2013
`Email dated May 21, 2014
`Reserved
`Reserved
`Deposition transcript of José Sasián, November 9, 2020
`José Sasián, Introduction to Lens Design (2019), hardcopy
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`2028
`2029
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`2030
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`2031
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`2032
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`2033
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`2034
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`2035
`2036
`
`2037
`2038
`
`2039
`
`2040
`
`2041
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`2042
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`Tigran V. Galstian, Smart Mini-Cameras (2014)
`Dmitry Reshidko and Jose Sasián, “Optical analysis of
`min- iature lenses with curved imaging surfaces,” Applied
`Optics, Vol. 54, No. 28, E216-E223 (October 1, 2015)
`José Sasián, Introduction to Aberrations in Optical Imag-
`ing Systems (2013), hardcopy
`Yufeng Yan and Jose Sasián, “Miniature Camera Lens De-
`sign with a Freeform Surface,” Design and Fabrication
`Congress (2017)
`Peter Clark, “Mobile platform optical design,” Proc. SPIE
`9293, International Optical Design Conference 2017,
`92931M (17 December 2014)
`Jane Bareau and Peter P. Clark, “The Optics of Miniature
`Digital Camera Modules,” SPIE Vol. 6352, International
`Op- tical Design Conference 2006, 63421F.
`Yufeng Yan, “Selected Topics in Novel Optical Design,”
`Ph.D. Dissertation (2019)
`Declaration of Jose Sasián, Ph.D. from IPR2020-00489
`Transcript of January 26, 2021 Video-Recorded Deposi-
`tion of Fredo Durand, Ph.D.
`U.S. Patent No. 8,989,517 (“Morgan-Mar”)
`Forsyth and Ponce, “Computer Vision: A Modern Ap-
`proach” (1st ed.) (2003)
`Declaration of Marc A. Fenster in Support of Motion to
`Appear Pro Hac Vice on Behalf of Patent Owner Corepho-
`tonics, Ltd.
`Declaration of James S. Tsuei in Support of Motion to Ap-
`pear Pro Hac Vice on Behalf of Patent Owner Corephoton-
`ics, Ltd.
`Transcript of June 8, 2021 Video-Recorded Deposition of
`Frédo Durand, Ph.D.
`Transcript of May 28, 2021 Video-Recorded Deposition of
`José Sasián, Ph.D.
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`I.
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`INTRODUCTION
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`Apple’s challenge to claims 19–22 should be rejected as it is based on an
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`incorrect claim construction, and because Apple lacks an obviousness theory
`
`under the correct construction.
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`Even if Apple’s construction were adopted, its theories of obviousness
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`suffer from more fundamental problems. They rest on the proposition that a
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`POSITA seeking a lens for use in the Parulski system would have looked to
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`lens designs from Kawamura and Ogata that were far older than Parulski’s
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`patent, designed for far larger cameras, and clearly inferior in performance to
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`lens designs that were contemporary to Parulski. They then rest on the propo-
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`sition that this POSITA would do something widely recognized in the art to
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`make a lens design worse, and even unmanufacturable—as recognized in the
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`writings of Apple’s own expert and in references that Apple itself has relied
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`on in IPRs filed against Corephotonics—scaling that lens design to a dramat-
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`ically smaller size.
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`Apple provides no plausible motivation for this perverse and illogical
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`approach. Rather, Apple resorts to drawing fine distinctions between purport-
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`edly “miniature” and non-“miniature” lens designs, and arguing without sup-
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`port that the scaling problem is limited to “miniature” lens designs. But Apple
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`and its own expert, in their Reply to this IPR, concede that lenses even larger
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`than the lenses it proposes in its obviousness combination are considered
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`“miniature.” Apple’s obviousness challenges should be rejected.
`
`II. CLAIM CONSTRUCTION
`
`A.
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`“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)
`
`Apple’s reply argues against construing the term to require that the step
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`of “to calculate depth information” be used “to create a fused image.” (Paper
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`23 at 1–4.) Corephotonics agrees that such an interpretation of the claims
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`would be incorrect, which is the reason that it never argued for such an inter-
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`pretation of claim 19. Rather, Corephotonics believes that the phrases “to cal-
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`culate depth information” and “to create a fused image suited for portrait
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`photos” are coordinate phrases in the grammatical sense, joined by the con-
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`junction “and,” but separately depending on the phrase “to find translations
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`between matching points in the images.”
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`None of Apple’s arguments in Reply contradict Corephotonics’ (correct)
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`claim interpretation. First, Apple makes an argument about commas. But in
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`English, the purpose of commas is to separate phrases. The absence of a
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`comma (“Oxford comma” or otherwise) between two phrases never suggests
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`it is more likely those phrases should be viewed as grammatically separate, as
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`Apple suggests the “to find translations . . .” and “to create a fused image . . .”
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`phrases are. At the very least, the opinions of Apple’s expert on the “Oxford
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`comma” issue should be disregarded, as he is not an expert on English gram-
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`mar, or even a native speaker of the language, and could not recall during his
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`deposition whether he typically uses an Oxford comma in his writing or even
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`what the corresponding comma usage rules are in his native French. (Ex. 2014,
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`Durand Reply Depo Tr. at 48:15–50:13.)
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`Likewise, Apple’s arguments about what is taught in the specification are
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`irrelevant. Apple does not dispute that the specification teaches using “trans-
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`lations between matching points in the images” to “create a fused image,” as
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`required under Corephotonics’ construction. (E.g., Ex. 1001, ’479 Patent at
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`5:10–33.) Whether the specification also shows depth information being used
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`to create a fused image is irrelevant to the claim construction dispute.
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`Corephotonics’ proposed construction should be adopted, and because
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`Apple has no theory of obviousness under this construction, Apple’s challenge
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`to claims 19–22 should be rejected.
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`III. PATENTABILITY OF CHALLENGED CLAIMS
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`A. Claims 19 and 20 Are Not Obvious Over the Combination of
`Parulski, Ogata, Kawamura, and Soga (Ground 1)
`
`Apple has no theory of obviousness under the correct interpretation of
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`the claim term “to find translations between matching points in the images to
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`calculate depth information and to create a fused image suit-ed for portrait
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`photos,” addresses above. However, even if the term were construed as Apple
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`proposes, Apple’s obviousness arguments fail.
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`Virtually all of Apple’s substantive response to Ground 1 rests on two
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`misconceptions: (1) that scaling of lenses by factors of 6 or 12 as Apple’s
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`combination requires would be practical, so long as the resulting lens is not
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`for a “miniature camera module,” and (2) that the scaled down lenses Apple
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`proposes are not of the class used in miniature camera modules. Stripped of
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`these two false premises, Apple has no argument that a POSITA would have
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`been motivated to use lenses she would have expected to be unmanufacturable
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`and impractical.
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`1.
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`A POSITA Would Recognize Apple’s Scaled Lenses to be
`Unmanufacturable and Otherwise Unsuitable, Whether
`They Are Called “Miniature” or Not
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`It is true that many of the textbooks and papers cited in Corephotonics’
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`response and in Dr. Moore’s declaration refer to “miniature” lenses or camera
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`modules or to applications in mobile phones. Making cameras that are small
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`enough to use in mobile phones is an area of intense practical interest. But
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`these references describe problems that occur quite generally when scaling
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`down a lens. None of these references suggests that there is a cut-off of lens
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`size where these problems from substantially scaling down a lens cease to be
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`an issue.
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`Apple’s position appears to be that because the table from the Galstain
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`textbook (Ex. 2028, Galstain at p. 4) gives the 1/3″ format as its largest exam-
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`ple of a miniature camera module that anything with a larger format sensor
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`than that is fundamentally different and does not pose any scaling issues. In
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`Apple’s view, a POSITA would believe that scaling by a factor of 12.2x (see
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`Ex. 2042, Sasián Reply Depo. Tr. at 71:9–23) from Kawamura’s 6x7 format
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`lens to a 1/2.5″ format lens would be successful, but that the additional scaling
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`by a factor of 1.2x from the 1/2.5″ format to the 1/3″ format (yielding a total
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`scaling of 14.6x) is the step that “can not” be done (Ex. 2029, Reshidko and
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`Sasián at E216) and that makes the lens “unmanufacturable” (Ex. 2033, Bar-
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`eau at 1).
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`There is simply no evidence in the record that a POSITA would find a
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`difference between the 12.2x scaling of Kawamura Apple relies on and a 14.6x
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`scaling that Apple appears to contend is required to make the lens “miniature.”
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`Apple’s expert certainly does not suggest that there is a meaningful technical
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`difference that would make the 12.2x-scaled lens “manufacturable” or other-
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`wise acceptable. Rather, his reply declaration simply dismisses the relevance
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`of the papers and textbooks cited by Corephotonics, by with an artificially
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`narrow definition of “miniature.”
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`There is ample evidence on the record that the 12.2x scaling of Kawa-
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`mura Apple’s theories depend on (and even the 6.12x scaling of Ogata) was
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`known in the art to be problematic: “Scaling down a conventional camera lens
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`requires spatial tolerances to scale down with the same ratio, which is about
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`the factor of 7. This creates a huge problem on the tolerance budget of ele-
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`ment and surface decenter.” (Ex. 2034, Yan at 83 (emphasis added).) Dr. Sas-
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`ián’s lens-design textbook gives a scaling of 10x as problematic: “As
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`mentioned before, one problem with the small scale of miniature lenses is that
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`lens element thickness and decenter errors can have a large impact by decreas-
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`ing performance. For example, a thickness error of 0.1 mm can be tolerable
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`in a 50mm focal length lens, but not at all in a miniature lens with a focal
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`length of 5 mm.” (Ex. 2027, Sasián at 192.)
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`2.
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`Apple’s Scaled Lenses Most Certainly Would Be Considered
`“Miniature” in the Art
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`Apple’s theory that the 1/3″ format listed in Galstain constitutes the up-
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`per bound of “miniature” lenses and that any larger lens is free of scaling
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`problems is belied by statements made both by Apple and by its expert in
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`Apple’s reply.
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`Apple’s reply states “Konno’s Example 2 lens system is a miniature cam-
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`era module using a sensor with an image height of 5.8, which translates
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`closely to a 1/1.7″ sensor . . . .” (Paper 23, Reply at 6.) Dr. Sasián’s reply
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`declaration contains an identical sentence. (Ex. 1039, Sasián Reply Decl. ¶ 3.)
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`But 1/1.7 of an inch is larger than 1/2.5 of an inch. (See Ex. 2028, Galstain p.
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`4, showing that sensor size diagonal in mm increases as the denominator x of
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`1/x-inch sensors decreases.)
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`Dr. Sasián confirmed that the 1/1.7″ sensor in Konno’s system that he
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`called a “miniature” camera module is larger than the 1/2.5″ sensor his scaled
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`lenses in Apple’s combination are intended for:
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`Q. Okay. So here, you offer -- turning back to your declaration,
`your reply declaration in the -00906 IPR, you say that Konno's
`Example 2 lens system is a miniature camera module.
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`Is that right?
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`A. Yes.
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`Q. And you say that it has a 1/1.7-inch sensor; is that right?
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`A. Yes.
`
`Q. And that would be a larger sensor than a 1/2.5-inch sensor; is
`that right?
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`A. Let me review my declaration. Just a second.
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`Okay. What is your question, please?
`
`Q. So my question is: A 1/1.7-inch sensor is larger than a 1/2.5-
`inch sensor; is that right?
`
`A. It appears so.
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`Q. And I'm sorry. When you say, “it appears so,” why do you say
`“it appears so”?
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`A. Because I have seen the slight differences on dimensions of
`sensors. But looking into my declaration, and taking the diagonal
`of a 1/2.5 inches sensor, which is 7.2 millimeters, or about 7.2
`millimeters, that would be a smaller than the diagonal on the Ta-
`ble 1.1 in my declaration, at least a sensor of 1/1.7 to have a di-
`agonal of 9.3 millimeters. So the 1.7 sensor will have -- will be
`larger than the 1/2.5-inch sensor.
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`This is no mere typographical error by Apple and its expert. Rather, Konno’s
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`inventions are about “miniaturization” of lenses. (Ex. 1015, Konno at [0002],
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`[0022], [0023], [0025], [0031].) Moreover, Apple in a prior IPR argued for
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`combining Konno’s 1/1.7″ sensor lens (without further scaling) with “The op-
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`tics of miniature digital camera modules” by Jane Bareau and Peter P. Clark.
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`(See IPR2018-01146, Paper 2, Petition at 56–65.) This Bareau paper is the
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`very same Bareau paper (Ex. 2033) that Corephotonics relies upon in this IPR
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`and that Apple dismisses as irrelevant to lenses for 1/2.5″ sensors because
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`such lenses are purportedly not “miniature.”
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`Apple suggests that their lenses scaled for 1/2.5″ sensors are not “minia-
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`ture” because they have longer focal lengths than lenses in Galstain’s table.
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`But Apple only actually calculates the focal length (16.27 mm) for the scaled
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`Kawamura lens. The scaled Ogata lens has a focal length of 35 mm / 6.114 =
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`5.724 mm. (Ex. 1026, Ogata at 7:35–62; Ex. 2015, Moore Decl. ¶ 63.) This is
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`close to the focal lengths of miniature camara module lenses listed as exam-
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`ples in Galstain’s table. (Ex. 2028, Galstain, p. 4.) It is true that the scaled
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`Kawamura lens has a longer focal length than the (typical wide-angle) lenses
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`listed in Galstain’s table, but that is to be expected, as telephoto lenses for a
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`given sensor size will always have a larger focal length in order to provide the
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`necessary image magnification. (Ex. 2015, Moore Decl. ¶ 31.)
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`Just as the 1/1.7″ sensor lens disclosed in Konno and relied upon by Ap-
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`ple is a “miniature lens,” subject to the manufacturing issues and scaling lim-
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`itations of such lenses, so to would the larger 1/2.5″ sensor lenses that Apple’s
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`obviousness theory depends on. A POSITA would not be motivated to use
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`scaled lenses as proposed by Apple.
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`3.
`
`The Differences Between Kawamura’s 1981 Large-Lens Ap-
`proach and the Approaches Actually Used in Small-Lenses
`Decades Later Is Highly Relevant
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`Apple does not dispute that there are many significant differences be-
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`tween the approach followed in designing small lenses in 2007 or 2013 (in-
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`cluding aspheric lens element, plastic lens elements, an aperture stop at the
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`front, and small f-number).
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`A modern designer of body armor is unlikely to take a medieval armor
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`design, scale it to the size of contemporary humans, and consider their job
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`finished. Likewise, a modern engineer is unlikely to simply scale an ancient
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`Roman bridge or aqueduct and build it today. Improved materials, improved
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`methods of design and analysis, and differing requirements in the modern age
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`mean that more recent designs are a vastly better starting point on which to
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`build. Even if someone were to use more primitive designs as an inspiration,
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`they would do more than simply scale, while leaving the design otherwise
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`unchanged (which Apple’s claim mapping requires).
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`While the difference in lens designs between 1981 and three decades
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`later may not have been as dramatic, Dr. Moore’s declaration explains that it
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`was significant, significant enough that a POSITA would have recognized that
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`the result of scaling Kawamura was inferior in terms of materials, design,
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`manufacturability, and performance to more current “well-known” miniature
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`telephoto lens designs. Apple is right that obviousness is measured by what is
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`known to a POSITA “at the time the invention was made,” and it is precisely
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`what that POSITA would have known in 2013 that would have led them away
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`from scaling a 1981 design, intended for a completely different purpose.
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`Were this a matter of anticipation, as it was in the IPR2018-01146 claims
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`Apple refers to (Paper 23, Reply at 14), Apple is correct that decades old de-
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`signs are as relevant as much newer designs. But, when the issue is anticipa-
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`tion, and the proposed combination involves a dramatic scaling, the situation
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`is different. To accept Apple’s theory is to believe that a POSITA in 2007 or
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`2013 would look to a lens design (Kawamura or Ogata) that she knows is
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`already substantially inferior compared to the state of the art, and that she
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`would then do something that is widely recognized in the art to make lenses
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`worse, scaling by a factor of 6 or 12 from conventional size to miniature (or
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`near-miniature, assuming Apple’s position) size. It is simply not plausible that
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`a POSITA seeking lenses for Parulski’s system would be perverse enough to
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`go to all of this trouble to make a bad system, by taking bad lenses (by con-
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`temporary standard) and making them worse.
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`A paper cited by Dr. Sasián in his reply declaration further demonstrates
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`that a POSITA would not have simply scaled Kawamura’s lens (or Ogata’s)
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`down to use with Parulski. Dr. Sasián cites a paper by his former student Rob
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`Bates as evidence of “knowledge that a POSITA would have” and “steps for
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`designing a miniature camera from a conventional lens design.” (Ex. 1039,
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`Sasián Reply Decl. ¶ 31.)
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`Reading what Bates actually says, it is clear why Dr. Sasián could not
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`have been following the steps in Bates. Bates describes the “ancestry” of the
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`modern miniature camera lens and explains that “[t]he camera objective in the
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`compact camera objective does not draw on the same ancestry as the common
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`large-format lens employed in digital imaging.” (Ex. 1040, Bates at 1.) He
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`explains that “[c]ompared to a large-format lens, the miniature camera objec-
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`tive meets and overcomes a different set of challenges . . .” and has “a lens
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`form that appears very different from the large-format lens.” (Id.) He describes
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`a “family tree” formed over “the last 200 years of lens design” where “the
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`modern miniature camera lens extends . . . on a different path than that of the
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`common large-format objective.” (Id. at 7.)
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`4.
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`Dr. Sasián’s Untimely New Lens Design Should Be Disre-
`garded
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`Apple (briefly) addresses a new lens design from Dr. Sasián and argues
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`that Corephotonics’ expert should have produced software lens analysis of his
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`own. (Paper 23, Reply at 15–16.) This argument vastly overstates the signifi-
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`cance of Dr. Sasián’s initial Zemax analysis. And Dr. Sasián’s new Zemax
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`analyses should be disregarded as an untimely obviousness theory presented
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`in reply.
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`The Zemax analyses in Dr. Sasián’s original declaration simply took the
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`lens prescriptions in the Kawamura and Ogata patents and confirmed that Ze-
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`max would scale them if asked to. There was little reason for Dr. Moore to
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`replicate that exercise.
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`As for the new lens design, this simply repeats an analysis that Dr. Sasián
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`did in support of a different Apple IPR, based on combinations with different
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`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`prior art. It contains massive changes to the Kawamura lens design and con-
`
`stitutes a new untimely obviousness argument. (Ex. 2042, Sasián Reply Depo.
`
`Tr. at 55:4–58:18.) It must be disregarded.
`
`B. Claims 21 and 22 Are Not Obvious Over the Combination of
`Parulski, Ogata, Kawamura, Soga, and Morgan-Mar (Ground
`2)
`
`Apple’s Reply suggests that all that the Ground 2 combination requires
`
`from Morgan-Mar is the focal length value to mimic and that all of the differ-
`
`ences in Morgan-Mar’s approach and goals from the other references are thus
`
`irrelevant. (Paper 23, Reply at 16–17.) But the focal length value is only re-
`
`quired for claim 22. In its discussion of claim 21, Apple never mentions the
`
`focal length teachings for Morgan-Mar. (Paper 3, Petition at 64–71.)
`
`If Apple is not suggesting incorporating the other teachings of Morgan-
`
`Mar, “bodily” or otherwise, then it has no grounds for obviousness for the
`
`limitations of claim 21. Apple’s challenges to both claims 21 and 22 should
`
`thus be rejected.
`
`C.
`
`Secondary Considerations / Objective Indicia of Non-Obvious-
`ness
`
`The Reply’s response to Patent Owner’s extensive evidence of secondary
`
`considerations fails to rebut Patent Owner’s demonstration of non-obvious-
`
`ness.
`
`14
`
`
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`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`First, Petitioner asserts that Patent Owner is not entitled to a presumption
`
`of nexus because it first needs to show that its objective evidence is “coexten-
`
`sive with … any specific feature of the challenged claims.” Paper 23, Reply,
`
`18. Petitioner argues that there is no evidence of “specific features of the
`
`claimed dual-aperture camera implementing the claimed fusion methods.” But
`
`Petitioner does not deny it vigorously pursued Patent Owner’s “image fusion
`
`algorithms” and “wide and tele camera image data” technology and the ability
`
`to license all of its intellectual property. These technology features are specific
`
`to the challenged claims.
`
`Second, Petitioner argues that Patent Owner’s use of secondary consid-
`
`erations with respect to multiple patents undermines Patent Owner’s reliance
`
`on the secondary considerations of non-obviousness regarding these patents.
`
`This ignores that more than one patent in a portfolio may have value. Under
`
`Petitioner’s theory, only one patent could ever be the basis of a secondary
`
`consideration of nonobvious. This ignores that Petitioner specifically asked
`
`Patent Owner for the ability to license all of Corephotonics IP, and asked for
`
`and received samples of Corephotonics’ image fusion algorithm. See Exs.
`
`2007, 2011, 2012, 2018, 2019, 2020, 2021, 2022; Ex. 2013 Kali Decl., at ¶¶
`
`15
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`
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`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
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`17-30. Thus, the technical features claimed in the ’479 patent are specifically
`
`what Petitioner requested to evaluate and license.
`
`Petitioner also refers to much of the industry praise as “self-serving,”
`
`dismissing it coming from investors, business partners and Patent Owner’s
`
`press releases. But this hand waives the fact that other companies entered into
`
`a business relationship with Patent Owner because of the patented technology.
`
`Petitioner’s position would require one to ignore the very actions of compa-
`
`nies who “put their money where their mouth is” regarding the claimed tech-
`
`nology of the ’479 patent.
`
`IV. CONCLUSION
`
`For the reasons set forth above, Corephotonics respectfully requests that
`
`the Board affirm the validity of claims 19–22 of the ’479 patent.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`Dated: June 22, 2021
`
`
`
` /Neil A. Rubin/
`Neil A. Rubin (Reg. No. 67,030)
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`Telephone: 310-826-7474
`
`Attorney for Patent Owner,
`COREPHOTONICS, LTD.
`
`16
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`
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`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
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`CERTIFICATE OF WORD COUNT
`
`I certify that there are 3228 words in this paper, excluding the portions ex-
`
`empted under 37 C.F.R. § 42.24(a)(1), according the word count tool in Mi-
`
`crosoft Word.
`
`
` /Neil A. Rubin/
`Neil A. Rubin (Reg. No. 67,030)
`
`
`17
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that “Patent Owner’s Sur-Reply” was served on June 22, 2021
`
`by email sent to:
`
`Michael S. Parsons
`Andrew S. Ehmke
`Jordan Maucotel
`Bethany Love
`Stephanie N. Sivinski
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`Telephone: 214-651-5000
`Email: michael.parsons.ipr@haynesboone.com
`Email: andy.ehmke.ipr@haynesboone.com
`Email: jordan.maucotel.ipr@haynesboone.com
`Email: bethany.love.ipr@haynesboone.com
`Email: stephanie.sivinski.ipr@haynesboone.com
`
`David W. O’Brien
`Hong Shi
`HAYNES AND BOONE, LLP
`600 Congress Ave. Suite 1300
`Austin, TX 78701
`Telephone: 512-867-8400
`Email: david.obrien.ipr@haynesboone.com
`Email: hong.shi.ipr@haynesboone.com
`
` /Neil A. Rubin/
`
`
`
`
`18
`
`
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