`
`
`
`
`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 RESPONSE TO
`PETITION FOR INTER PARTES REVIEW
`
`
`
`Case Nos. 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.
`SUMMARY OF ARGUMENT ................................................ 1
`II.
`III. LEVEL OF ORDINARY SKILL IN THE ART (POSITA) ....... 4
`IV. LEGAL STANDARDS ........................................................... 5
`V. OVERVIEW OF THE ’479 PATENT ...................................... 6
`VI. CLAIM CONSTRUCTION ..................................................... 9
`A.
`portrait photos” (claim 19) .............................................................. 9
`VII. OVERVIEW OF SELECTED PRIOR ART ........................... 12
`A.
`Parulski .......................................................................................... 12
`Kawamura ..................................................................................... 15
`B.
`C.
`Ogata ............................................................................................. 29
`VIII. OBVIOUSNESS ................................................................... 36
`A.
`Parulski, Ogata, Kawamura, and Soga (Ground 1) ....................... 36
`1.
`and Kawamura Lens Designs with Parulski ............................ 36
`2.
`Parulski ..................................................................................... 39
`3.
`A POSITA Would Not Have Scaled Ogata to Use in Parulski 57
`
`Claims 19 and 20 Are Not Obvious Over the Combination of
`
`A POSITA Would Not Have Been Motivated to Use the Ogata
`
`A POSITA Would Not Have Scaled Kawamura to Use in
`
`i
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`4.
`
`Apple Has Not Shown that the Limitation “to find translations
`between matching points in the images to calculate depth
`information and to create a fused image suited for portrait
`
`Claims 21 and 22 Are Not Obvious Over the Combination of
`
`photos” Is Satisfied Under Its Proper Construction ................. 59
`B.
`Parulski, Ogata, Kawamura, Soga, and Morgan-Mar (Ground 2) 66
`IX. SECONDARY CONSIDERATIONS / OBJECTIVE INDICIA
`OF NON-OBVIOUSNESS .................................................... 68
`A.
`Industry Praise / Licensing ............................................................ 70
`B.
`Commercial Success ..................................................................... 77
`Failure of Others / Copying ........................................................... 78
`C.
`X. CONCLUSION .................................................................... 80
`
`
`
`ii
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) ................................................................. 5
`
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966). ................................................................................... 69
`
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir.2016) .................................................................. 5
`
`Heidelberger Druckmaschinen AG v. Hantscho Commercial Products, Inc.,
`21 F.3d 1068 (Fed. Cir. 1994) ................................................................. 79
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ................................................................. 5
`
`Mintz v. Dietz & Watson, Inc.,
`679 F.3d 1372 (Fed. Cir. 2012) ............................................................... 69
`
`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018) .............................................................................. 5
`
`Wasica Finance GMBH v. Continental Auto. Systems,
`853 F.3d 1272 (Fed. Cir. 2017) ................................................................. 6
`
`
`
`
`
`
`iii
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`PATENT OWNER’S EXHIBIT LIST
`
`2005
`
`2006
`
`Exhibit No Description
`2001
`Declaration of John C. Hart, Ph.D.
`2002
`Fredo Durand, Presentation Titled “Photography 101”
`2003
`Curriculum Vitae of John C. Hart, Ph.D.
`2004
`Complaint for Patent Infringement, Dkt. No. 1, Case No.
`19-cv-4809 (United States District Court, Northern District
`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 Deposition
`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
`
`2007
`2008
`2009
`2010
`2011
`2012
`2013
`2014
`
`2015
`2016
`2017
`2018
`2019
`2020
`2021
`2022
`2023
`2024
`2025
`2026
`2027
`
`iv
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`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 Imaging
`Systems (2013), hardcopy
`Yufeng Yan and Jose Sasián, “Miniature Camera Lens De-
`sign with a Freeform Surface,” Design and Fabrication Con-
`gress (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 Deposition
`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)
`
`2028
`2029
`
`2030
`
`2031
`
`2032
`
`2033
`
`2034
`
`2035
`2036
`
`2037
`2038
`
`
`
`
`v
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`I.
`
`INTRODUCTION
`
`Patent Owner Corephotonics, Ltd. submits this response to the Petition
`
`filed by Apple Inc., requesting inter partes review of claims 19–22 of U.S.
`
`Patent No. 10,225,479 (Ex. 1001, ’479 patent). The Board granted institution
`
`on two grounds of obviousness, each involving a combination of Parulski (Ex.
`
`1005) with Ogata (Ex. 1026), Kawamura (Ex. 1012), Soga (Ex. 1006) and for
`
`claims 21–22 Morgan-Mar (Ex. 1009). Corephotonics submits that the argu-
`
`ments presented herein and the additional evidence submitted, such as the tes-
`
`timony from Patent Owner’s expert witnesses John Hart (Ex. 2001) and
`
`Duncan Moore (Ex. 2015), demonstrate that Apple has failed to establish ob-
`
`viousness of the challenged claims and that Apple’s grounds should be re-
`
`jected.
`
`II. SUMMARY OF ARGUMENT
`
`As explained below, the key premise of Apple’s petition that a POSITA
`
`would have been motivated to combine the dual-camera system of Parulski
`
`with the lenses from Kawamura and Ogata is wildly off the mark. Parulski
`
`dates from 2007 and calls for the use of miniature digital sensors, which Apple
`
`acknowledges would be 1/2.5 inches in size or smaller. It does so to achieve
`
`its stated goals of light weight and low cost.
`
`1
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`Kawamura dates from 1981 and describes massive lenses for film for-
`
`mats larger than even the standard formats of the day. A camera using such a
`
`lens would have been 7 inches long and weighed multiple pounds. Ogata is
`
`likewise a film camera lens, albeit from 1993 and for use with 35 mm film.
`
`Even Apple does not suggest that a POSITA would use lenses this large in
`
`combination with Parulski.
`
`Rather, Apple’s petition suggests that Kawamura’s and Ogata’s lenses
`
`could be “scaled down,” made smaller in length by factors of 12 and of 6,
`
`respectively.
`
`While Apple’s expert declaration from Dr. Sasián suggests such a scal-
`
`ing down is possible, that expert’s own professional work states that “a tradi-
`
`tional objective lens can not be simply scaled down as a lens solution due to
`
`fabrication constraints, materials properties, manufacturing process, light dif-
`
`fraction and geometrical aberrations.” As explained further below, Apple’s
`
`expert is not alone in this view, which is shared by many other papers in the
`
`field.
`
`Moreover, Apple does not persuasively argue why a POSITA would
`
`have looked to lens designs from decades prior to Parulski, intended for a very
`
`different purpose, and designed and manufactured with more limited
`
`2
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`technology, or why a POSITA would have expected that scaling them down
`
`would have been successful. Rather, the evidence shows that a POSITA would
`
`have looked to one of the hundreds of known miniature lens designs when
`
`looking for lenses to use in Parulski. Further, the evidence shows that a
`
`POSITA would have used a lens with modern miniature lens features, includ-
`
`ing aspheric lens surfaces, plastic molding, a forward aperture stop, and a
`
`small f-number in order to achieve acceptable performance in the Parulski
`
`system. None of these features is offered by Kawamura’s 1981 lenses and
`
`most are also lacking from Ogata’s 1993 lenses, either in their original sizes
`
`or scaled down.
`
`Even assuming a POSITA would have been motivated to make these
`
`modifications and combine the resulting designs, Apple’s obviousness theory
`
`rests on an incorrect construction of the claims. Specifically, Apple seeks to
`
`eliminate any requirement that translations between matching points in the
`
`images from the two cameras be part of the process of creating the fused im-
`
`ages, as the plain meaning of the claims requires and as the ’479 patent spec-
`
`ification describes. Apple has not presented any prior art combination that
`
`satisfies the claims as property construed.
`
`3
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`These and other flaws in Apple’s obviousness grounds are explained
`
`further below.
`
`In addition, there exist considerable objective evidence confirming the
`
`non-obviousness of the challenged claims. Corephotonics has, in a non-litiga-
`
`tion context, licensed the technology claimed in the ’479 patent to numerous
`
`companies, including some of the largest smartphone makers in the world. In
`
`2019, Samsung acquired Corephotonics and its camera technologies for
`
`$155m. And, critically, Apple itself asked Corephotonics for its patented tech-
`
`nology, evaluated and studied it for years, and then asked for a portfolio li-
`
`cense from Corephotonics.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART (POSITA)
`
`For purposes of this proceeding, Patent Owner accepts Petitioner’s def-
`
`inition of the level of ordinary skill, namely that a POSITA “would include
`
`someone who had, as of the claimed priority date of the ’479 Patent, a bache-
`
`lor’s or the equivalent degree in electrical and/or computer engineering or a
`
`related field and 2-3 years of experience in imaging systems including image
`
`processing and lens design,” and that “that someone with less formal educa-
`
`tion but more experience, or more formal education but less experience could
`
`4
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`have also met the relevant standard for a POSITA.” Ex. 1003, ¶ 13. See also
`
`Declaration of John C. Hart, Ph.D. (“Hart Declaration”) (Ex. 2001), ¶¶ 14-18.
`
`IV. LEGAL STANDARDS
`
`The petitioner has the burden to clearly set forth the basis for its chal-
`
`lenges in the petition. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
`
`(Fed. Cir.2016) (citing 35 U.S.C. § 312(a)(3) as “requiring IPR petitions to
`
`identify ‘with particularity ... the evidence that supports the grounds for the
`
`challenge to each claim’”). A petitioner may not rely on the Board to substi-
`
`tute its own reasoning to remedy the deficiencies in a petition. SAS Inst., Inc.
`
`v. Iancu, 138 S. Ct. 1348, 1355 (2018) (“Congress chose to structure a process
`
`in which it’s the petitioner, not the Director, who gets to define the contours
`
`of the proceeding.”); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381
`
`(Fed. Cir. 2016) (rejecting the Board’s reliance on obviousness arguments that
`
`“could have been included” in the petition but were not, and holding that the
`
`Board may not “raise, address, and decide unpatentability theories never pre-
`
`sented by the petitioner and not supported by the record evidence”); Ariosa
`
`Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015)
`
`(holding that “a challenge can fail even if different evidence and arguments
`
`might have led to success”); Wasica Finance GMBH v. Continental Auto.
`
`5
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`Systems, 853 F.3d 1272, 1286 (Fed. Cir. 2017) (holding that new arguments
`
`in a reply brief are “foreclosed by statute, our precedent, and Board guide-
`
`lines”).
`
`V. OVERVIEW OF THE ’479 PATENT1
`
`The ’479 patent describes and claims techniques for making “thin dig-
`
`ital cameras with optical zoom operating in both video and still mode.” (Ex.
`
`1001, ’479 patent at 3:27–28.) As the patent explains, zoom is “commonly
`
`understood as a capability to provide different magnifications of the same
`
`scene and/or object by changing the focal length of an optical system.” (Ex.
`
`1001, ’479 patent at 1:44–49.) Traditionally, this was accomplished by me-
`
`chanically moving lens elements relative to one another. (Ex. 1001, ’479 pa-
`
`tent at 1:49–51.) Another approach is “digital zooming,” where the focal
`
`length of the lens is kept unchanged, but the image is cropped and digitally
`
`manipulated to produce an image that is magnified but has a lower resolution.
`
`(Ex. 1001, ’479 patent at 1:55–38.)
`
`The ’479 patent describes an approach to approximating the effect of a
`
`zoom lens (which varies its focal length) by using two lens systems (a “wide”
`
`and a “tele” lens system) with different fixed focal lengths. (Ex. 1001, ’479
`
`
`1 See Hart Decl., ¶¶ 31-35.
`
`6
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`patent at 3:34–54.) Various computational means are used to take the images
`
`from these two lenses to produce an output that approximate a system with
`
`mechanical zoom. This approach can produce a device that is smaller, lower
`
`cost, and more reliable than devices that use mechanical zoom. (Ex.
`
`1001, ’479 patent at 1:51–53.)
`
`
`
`(Ex. 1001, ’479 patent, Fig. 1B)
`
`Relevant to the claims of the ’479 patent, the specification describes
`
`combining still images using the technique of “fusion.” (Ex. 1001, ’479 patent
`
`at 3:48–54.) A “fused” image includes information from both the wide and
`
`tele images. (Id.) One approach to performing fusion is shown in Figure 5:
`
`7
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`
`
`(Ex. 1001, ’479 patent, Fig. 5.)
`
`Making a compact, high-quality dual-aperture zoom system requires
`
`lenses with particular characteristics. The ’479 patent teaches lens designs for
`
`the tele lens which provide a small “total track length” relative to their focal
`
`length, which means that they have a compact size in light of the degree of
`
`magnification that they provide. (Ex. 1001, ’479 patent at 12:38–53.) One of
`
`8
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`the lens designs taught by the ’479 patent and covered by several of the chal-
`
`lenged claims is shown in Figure 9:
`
`(Ex. 1001, ’479 patent, Fig. 9.)
`
`
`
`The lens aspects of the ’479 patent are described further in Dr. Moore’s
`
`declaration. (E.g., Ex. 2015, Moore Decl., ¶¶ 31–34.)
`
`VI. CLAIM CONSTRUCTION
`
`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)
`
`Petitioner argues that this term, appearing in claim 19, should be con-
`
`strued “as requiring the claimed camera controller to (1) ‘find translations
`
`9
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`between matching points in the images to calculate depth information’ and (2)
`
`‘creating a fused image suited for portrait photos.’” (Ex. 1003, ¶¶ 31–35.) This
`
`construction repeats the words from the claim term verbatim, so it is not seek-
`
`ing to construe particular words with technical meaning to a POSITA. See
`
`Hart Decl., ¶ 47. Rather, the construction offers a particular way of parsing
`
`the grammar, arguing that the two parts of the term on either side of the word
`
`“and” are independent steps, and that nothing prior to the word “and” modifies
`
`anything after the word “and.” In particular, Apple and Dr. Durand appear in
`
`this construction to be avoiding having to demonstrate that the “translations
`
`between matching points in the images” are used as part of the “create a fused
`
`image” process. Id.
`
`This construction fails to capture the plain meaning of the phrase, in
`
`view of the ’479 patent specification. First, focusing just on the phrase Dr.
`
`Durand construes, the phrase has three verbs in the infinitive “to” form: “to
`
`find . . . to calculate . . . and to create . . . .” It appears in a larger phrase
`
`(surrounded by commas) with four infinitive verbs: “to process . . . to find . . .
`
`to calculate . . . and to create . . . .” (Ex. 1001, ’479 patent at 15:28–32.) The
`
`“and” joins “to create” with one of the other “to” verbs. The most natural “to”
`
`10
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`verb to connect it with is the closest one, “to calculate,” not one of the earlier
`
`ones as suggested by Dr. Durand. See Hart Decl., ¶ 48.
`
`Looking at the broader phrase, a POSITA would recognize that the
`
`“creat[ing] a fused image” is part of the broader “to process the Wide Tele
`
`images” step. Each of the other independent claims (1 and 23) contain the
`
`phrase “[to process/processing] the Wide and Tele images to create a fused
`
`image.” (Ex. 1001, ’479 patent at 13:43–44, 15:61–62.) Likewise, in the spec-
`
`ification, the output of the fused image is described as part of “processing”
`
`the images. (Ex. 1001, ’479 patent at 3:64–65 (“Processing is applied on the
`
`two images to fuse and output one fused image in still mode.”), 7:57–58 (“im-
`
`age processing that fuses the Wide and the Tele images to achieve optical
`
`zoom”)). In the context of the ’479 patent, “creat[ing] a fused image” is un-
`
`derstood as part of “process[ing] the Wide and Tele images,” meaning that the
`
`whole larger phrase “to process the Wide and Tele images to find translations
`
`between matching points in the images to calculate depth information and to
`
`create a fused image suited for portrait photos” describes a single process, not
`
`distinct and unrelated processes as suggested by Dr. Durand’s construction.
`
`See Hart Decl., ¶ 49.
`
`11
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`VII. OVERVIEW OF SELECTED PRIOR ART
`
`A.
`
`Parulski2
`
`The Parulski patent was published as U.S. Patent No. 7,859,588 and
`
`issued on December 28, 2010. (Ex. 1005.) It was filed on March 9, 2007. (Ex.
`
`1005, Parulski, at 1.)
`
`Parulski at the Summary of the Invention includes an overview of the
`
`preferred embodiments and their motivations at 7:54 – 8:19. These embodi-
`
`ments include the use of the secondary image from the additional lens “to
`
`sharpen portions of the primary image … where the secondary output image
`
`is captured … at a different focus position … ; to modify the dynamic range
`
`of the primary image … ; to provide scene analysis data for setting the capture
`
`parameters for the primary image; or to replace portions of the primary image
`
`… with corresponding portions of [a longer exposure] secondary image.” Id.
`
`at 7:56-8:5. As this list suggests, these various preferred embodiments are de-
`
`signed to achieve different results, and they take different approaches to doing
`
`so. A POSITA would not understand all of Parulski’s specification (or all of
`
`the portions cited by Apple and Dr. Durand) to be part of the same embodi-
`
`ment or even to be compatible with one another. See Hart Decl., ¶ 52.
`
`
`2 See Hart Decl., ¶¶ 51-71.
`
`12
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`Parulski discloses a camera system comprising “the use of two (or
`
`more) image capture stages, wherein an image capture stage is composed of a
`
`sensor, a lens and a lens focus adjuster, in a multi-lens digital camera in which
`
`the two (or more) image capture stages can be used to separately capture im-
`
`ages of the same scene so that one image capture stage can be used for auto-
`
`focus and other purposes while the other(s) is used for capturing an image.”
`
`Id. at 8:6-13. “More specifically, the non-capturing image stage may advan-
`
`tageously be used to provide a secondary image that can be used to modify or
`
`otherwise augment, e.g., the focus or dynamic range of the primary image.”
`
`Id. at 8:16-19. See Hart Decl., ¶ 53.
`
`Parulski uses Figure 1 reproduced below to illustrate an “image capture
`
`assembly” including “two imaging stages 1 and 2.” Id. at 12:42-43. The image
`
`capture stages 1 and 2 comprise the zoom lenses 3 and 4 and the image sensors
`
`12 and 14… .” Id. at 12:66-67. Lenses 3 and 4 “have different focal lengths to
`
`provide and extended optical zoom range for the image capture assembly.” Id.
`
`at 10:15-17. See Hart Decl., ¶ 54.
`
`13
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`
`
`Parulski discloses that this design can facilitate autofocusing. “The con-
`
`trol processor and timing generator 40 controls the digital multiplexers 34 and
`
`36 in order to select one of the sensor outputs (12e or 14e) as the captured
`
`image signal, and to select the other sensor output (14e or 12e) as the autofo-
`
`cus image signal.” Id. at 14:1-5. “Briefly summarized, the image processor 50
`
`produces the focus detection signals that drive the first and second focus ad-
`
`justers, that is, the zoom and focus motors 5a and 5b.” See Hart Decl., ¶ 55.
`
`Dr. Hart describes Parulski’s methods in greater detail in his declaration. E.g.,
`
`Hart Decl., ¶¶ 56–71.
`
`14
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`B. Kawamura3
`
`Kawamura was published in 1983 as Japanese Patent Application Pub-
`
`lication S58-62609. (Ex. 1012, Kawamura at 1.) It was filed in 1981. (Ex.
`
`1012, Kawamura at 1.) The applicant was Asahi Optical Co., a Japanese cam-
`
`era manufacturer that sold cameras under the Pentax brand. (Ex. 1012, Kawa-
`
`mura at 1.) See Moore Decl., ¶ 40.
`
`Kawamura describes “a lens of a focal length of about 200 mm for a
`
`screen size of 6x7” and provides four examples of such 200 mm focal length
`
`lenses. (Ex. 1012, Kawamura at 1, 3–5.) It also refers to the possibility of “a
`
`focal length of about 150 mm for a screen size of 4.5x6,” but it does not pro-
`
`vide any examples of such a lens. (Ex. 1012, Kawamura at 1.) See Moore
`
`Decl., ¶ 41.
`
`The Pentax 6x7 was a medium format SLR camera utilizing 120 or 220
`
`roll film.4 The term “medium format” refers to film sizes smaller than the
`
`“large format” film used in early studio cameras, but larger than the 35 mm
`
`and smaller films that were once ubiquitous. The 120 film format is over a
`
`century old, having been introduced for use in the Eastman Kodak “Brownie”
`
`
`3 See Declaration of Duncan Moore (Ex. 2015) (“Moore Decl.”), at ¶¶ 40-58.
`4 https://en.wikipedia.org/wiki/Pentax_6%C3%977
`
`15
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`camera in 1901.5 The nominal width of images on 120 (and 220) film is 56
`
`mm, substantially larger than the 24 mm width of images on “35 mm” 135
`
`format film.6 A 6x7 image has a nominal size on the film of 56 mm x 67 mm,
`
`and a 4.5x6 image has a nominal size on the film of 56 mm x 41.5 mm.7
`
`Therefore, the numbers in “6x7” and “4.5x6” correspond to the approximate
`
`film dimensions in centimeters. (Ex. 2026, Sasián Deposition at 42:20–43:20.)
`
`See Moore Decl., ¶ 42.
`
`The Kawamura lens has “a brightness of about 1:4.” (Ex. 1012, Kawa-
`
`mura at 1.) Each of the examples in Kawamura actually have a brightness ratio
`
`of 1:4.1. (Ex. 1012, Kawamura at 3–5.) This brightness ratio is another way
`
`of expressing what is commonly called the “f-number.”8 So, the Kawamura
`
`lenses have a f-number of about f/4.1. For a single lens, the f-number is de-
`
`fined as the effective focal length of the lens divided by the diameter of the
`
`entrance pupil. For a single lens with the aperture stop at the lens, the entrance
`
`
`5 https://en.wikipedia.org/wiki/Brownie_(camera)
`6 https://en.wikipedia.org/wiki/120_film, https://en.wikipedia.org/wiki/135_
`film
`7 https://en.wikipedia.org/wiki/120_film
`8 https://www.kenrockwell.com/tech/lens-specifications.htm (“f/numbers are
`usually expressed as fractions with a slash, like f/5.6, when writing them
`and reading EXIF data. Lenses themselves are often marked with a colon,
`like 1:2.8. It means the same thing.”)
`
`
`
`16
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`pupil diameter is simply the diameter of the lens, which determines how much
`
`light enters the lens. For multi-element lenses, the calculation is more compli-
`
`cated, but it remains true that the entrance pupil diameter determines how
`
`much light travels through the lens system to the sensor. The f number, in turn,
`
`determines how much light reaches each unit of area on the sensor per unit of
`
`time. Smaller f-number lenses form a brighter image at the sensor. As a result,
`
`the f-number affects how long an exposure must be under given light condi-
`
`tions, i.e., how “fast” the lens is. The f-number also affects the depth of field
`
`of an image and the degree of image aberrations. See Moore Decl., ¶ 43.
`
`A larger film size means a larger camera and larger lenses. The Pentax
`
`6x7 camera is shown in the following photo9:
`
`
`9 http://camera-wiki.org/wiki/Pentax_67
`
`17
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`
`
`
`
`The Pentax 6x7 camera body (without lens) was 184 mm (about 7.25
`
`inches) wide and weighed 1.29 kg (almost 3 pounds).10 A lens added further
`
`weight. As this photo shows, the manufacturer made a hand grip to assist the
`
`user in holding and controlling the heavy camera. See Moore Decl., ¶ 45.
`
`
`10 http://camera-wiki.org/wiki/Pentax_67
`
`18
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`The following photo shows the Pentax 6x7 camera, together with an
`
`Asahi 200 mm, 1:4 brightness lens of the general type described in Kawa-
`
`mura11:
`
`See Moore Decl., ¶ 46.
`
`The following photos from an eBay listing shows the same Asahi
`
`1:4/200 6x7 lens and better illustrate its shape and dimensions12:
`
`
`
`
`11 http://camera-wiki.org/wiki/Pentax_67
`12 https://www.ebay.com/p/126837639
`
`19
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`See Moore Decl., ¶ 47.
`
`20
`
`
`
`
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`
`
`According to this eBay listing, the lens has a weight of 8.88 oz.13 This
`
`is not surprising given the multiple large glass elements and the need for a
`
`large barrel to hold them. While the Asahi lens shown in these photos may not
`
`have exactly the same design as described in the Kawamura patent, it is of the
`
`same general class of lenses. This further confirms that a camera using a lens
`
`of the type described in Kawamura would weigh multiple pounds. See Moore
`
`Decl., ¶ 48.
`
`The following photo shows a Pentax 4.5x6 camera.14 Note that the lens
`
`in this photo is a 45 mm focal length lens, much shorter than the 150 mm lens
`
`mentioned by Kawamura. While the 4.5x6 camera is narrower than its 6x7
`
`counterpart, it is still a much larger and heavier camera than more typical
`
`35 mm cameras. See Moore Decl., ¶ 49.
`
`
`13 https://www.ebay.com/p/126837639
`14 http://camera-wiki.org/wiki/Pentax_645
`
`21
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`
`
`
`
`Dr. Sasián’s Zemax analysis allows us to confirm how long the lenses
`
`disclosed in Kawamura are. The lens that he scaled using Zemax was Kawa-
`
`mura’s Example 1 lens. Ex. 1021, ¶ 45; Ex. 1012 at 3. The focal length of the
`
`unmodified lens is given in Kawamura as 200.079 mm. Ex. 1012 at 3. After
`
`scaling in Zemax, the lens had a focal length of 16.330 mm and a total axial
`
`length of 15.343 mm. Ex. 1021 at 26. This shows that Dr. Sasián scaled the
`
`Kawamura lens by a factor of 200.08 mm / 16.330 mm = 12.25. The original
`
`lens thus had a total axial length of 12.25 × 15.34309 mm = 188 mm, or
`
`roughly 7.4 inches, meaning that any camera with the original Kawamura
`
`22
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`example 1 lens attached would be at least 7.4 inches long. See Moore Decl., ¶
`
`50.
`
`Unsurprisingly for a lens of this size in that era, the lens elements are
`
`made of glass. (Ex. 1012, Kawamura at 2–3.) Also to be expected for a lens
`
`from 1981, the lens elements are all spheric, meaning that the front and rear
`
`surfaces of each lens element forms a portion of a sphere, and the shape of
`
`each surface is defined by a single parameter, r, the radius of curvature. (Ex.
`
`1012, Kawamura at 3–9.) The spherical lens shapes are apparent from the cir-
`
`cular arc shapes of the surfaces in the cross section drawings, Figures 1, 3, 5,
`
`and 7:
`
`
`
`23
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`(Ex. 1012, Kawamura, Figure 1.) See Moore Decl., ¶ 51.
`
`The Kawamura lens is described as an “Ernostar type” lens. (Ex. 1012,
`
`Kawamura at 1.) The first “Ernostar” lens was developed the Ernemann com-
`
`pany in the 1920s.15 In the 1920s, simulation and optimization of lens designs
`
`was a laborious, manual process. In 1981, computers existed, but they were
`
`limited (relative to 2009 or 2013 computers) in their ability to perform the
`
`intensive calculations required to ray-trace and optimize a lens design with
`
`many parameters. While in 1981, the computers available to a lens designer
`
`may have been able to perform millions of calculations per second, the com-
`
`puters available in 2009 or in 2013 could perform trillions per second.16 See
`
`Moore Decl., ¶ 52.
`
`Lens fabrication technology in 1981 was also more limited than today.
`
`Commonly used lens grinding techniques produced spherical shapes. Even if
`
`aspheric shapes could be manufactured, limitations in computing power made
`
`it difficult to achieve highly optimized aspheric designs. See Moore Decl., ¶
`
`53.
`
`
`15 https://en.wikipedia.org/wiki/History_of_photographic_lens_design;
`https://www.pencilofrays.com/lens-design-forms/
`16 https://en.wikipedia.org/wiki/Computer_performance_by_orders_of_mag-
`nitude
`
`24
`
`
`
`Case Nos. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`One tool that was available, however, was appropriate placement of the
`
`aperture stop. In a lens design that is symmetric about the stop, the aberrations
`
`that correspond to odd powers of the field of view—such as coma, distortion,
`
`and chromatic change of magnification—will tend to cancel out. (Ex. 2030,
`
`Sasián Introduction to Aberrations at 73–74.) While useful lens designs are
`
`not perfectly symmetric about the aperture stop, placing the aperture stop near
`
`the center of the lens assembly was a common way of reducing aberrations
`
`and improving lens performance. (Ex. 2028, Reshidko and Sasián at E218
`
`(“Many classical objectives are designed symmetrically around the aperture
`
`stop.”)) See Mo
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
