Inter Partes Review of
`Patent No. 10,225,479
`
`Apple Inc. v. Corephotonics, LTD., Case No. IPR2020-00906
`
`Michael Parsons
`Jordan Maucotel
`Haynes and Boone, LLP
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`1
`
`
`Patent No. 10,225,479
`
`Apple Inc. v. Corephotonics, LTD., Case No. IPR2020-00906
`
`Michael Parsons
`Jordan Maucotel
`Haynes and Boone, LLP
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`1
`
`
`
`Overview of Topics
`
`Patent Owner’s proposed construction is not supported by
`a plain reading or the embodiments in the specification
`A POSITA would have looked to Ogata and Kawamura
`because they satisfy Parulski’s suggested FOVs for each lens
`
`None of Patent Owner’s evidence addresses how a POSITA
`would have scaled Ogata and Kawamura for a Digital Camera
`Patent Owner’s evidence of secondary consideration
`has no nexus with the claims of the ’479 patent
`
`Patent Owner’s evidence is not credible and no evidence
`demonstrates commercial success, failure of others, or copying
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`2
`
`2
`
`
`
`Patent Owner’s construction of limitation 19(e)
`is not supported by a plain reading
`• Petitioner’s Construction of 19(e)
`• Patent Owner’s Construction of 19(e)
`
`APPL-1001, 15:40-50.
`
`APPL-1001, 15:40-50.
`
`• The camera controller is configured to do
`three separate things:
`•
`to control the AF mechanism,
`•
`to process Wide and Tele images to
`find translations between matching
`points to calculate depth information
`and
`to create a fused image suited for
`portrait photos.
`
`•
`
`Petitioner Reply at 1-4;
`Petition at 8-10.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`• The camera controller is configured to do
`two separate things:
`•
`to control the AF mechanism,
`•
`to process Wide and Tele images to
`find translation between matching
`points (1) to calculate depth
`information and (2) to create a fused
`image suited for portrait photos.
`
`Sur-Reply at 2-3.
`
`3
`
`3
`
`
`
`Petitioner’s construction properly treats limitation 19(e)
`as a list of three distinct steps
`
`• Petitioner’s Construction
`
`APPL-1001 at 15:25-32.
`
`• Patent Owner’s Construction
`
`The “configured” clause includes a list of three
`,
`, and
`) indicated by:
`steps (
`•
`the word “to” beginning each step, a comma
`between steps 1 and 2, and the word “and”
`between steps 2 and 3.
`
`The “configured” clause includes a list of two
`,
`) indicated by only a
`steps (
`comma. The “and” between the first and
`second steps is implied.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`4
`
`4
`
`
`
`Petitioner’s construction is consistent with how the
`rest of the claims recite a list of features
`
`Petitioner’s Construction of 19(e):
`
`APPL-1001 at 15:25-32.
`
`Claim 20
`
`Limitation 19(e) is a list that does not use
`the oxford comma. Use of the comma
`after Step 1 establishes that this is a list of
`three steps.
`
`Claim 20 similarly does not use the oxford
`comma and is treated by Patent Owner as
`a list of four elements.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`APPL-1001 at 15:34-42.
`
`5
`
`5
`
`
`
`Patent Owner’s construction relies on a grammatical error
`that is inconsistent with the rest of the claims
`
`• Patent Owner’s Construction of 19(e)
`
`APPL-1001 at 15:25-32.
`• Limitation 1(e)
`
`Patent Owner’s construction relies on
`treating the comma between the “
`” and “
`” steps as an “and”.
`
`” and “
`Limitation 1(e) also lists “
`” steps but uses “and” to separate
`the steps.
`
`APPL-1001 at 13:40-50.
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`6
`
`6
`
`
`
`Overview of Topics
`
`Patent Owner’s proposed construction is not supported by
`a plain reading or the embodiments in the specification
`A POSITA would have looked to Ogata and Kawamura
`because they satisfy Parulski’s suggested FOVs for each lens
`
`None of Patent Owner’s evidence addresses how a POSITA
`would have scaled Ogata and Kawamura for a Digital Camera
`Patent Owner’s evidence of secondary consideration
`has no nexus with the claims of the ’479 patent
`
`Patent Owner’s evidence is not credible and no evidence
`demonstrates commercial success, failure of others, or copying
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`7
`
`7
`
`
`
`The Petition provided evidence of Parulski’s Digital Still Camera
`embodiment in combination with Ogata and Kawamura
`
`•
`
`•
`
`The Petition specifically
`cites to Parulski’s Dual
`Aperture Digital Still
`Camera embodiment.
`
`The Kodak v610 is one
`example offered in Parulski
`of a Digital Still Camera
`using a 1/2.5” image
`sensor.
`
`APPL-1005 (Parulski), Fig. 2A-2B (annotated) cited in Petition at 39;
`see also Petitioner Reply at 6-7.
`
`See APPL-1005 at 5:29-35; APPL-1033 at 1, 62, 64 cited in Petition at 12-13, 19-20.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`8
`
`8
`
`
`
`Parulski suggests specific focal lengths
`for its fixed-focal length Wide and Tele lenses
`
`Parulski suggests using:
`• a
`• a
`
`and
`.
`
`APPL-1005 (Parulski) at 23:28-43 cited in Petition at 21-22, 28-29.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`9
`
`9
`
`
`
`Parulski’s suggested 40 mm Wide and 100 mm Tele
`suggest Wide and Tele fields of view (FOV)
`
`• Parulski suggests a Wide FOV of 57º
`
`• Parulski suggests a Tele FOV of 24º
`
`Petition at 29-30.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`Petition at 23-24.
`
`10
`
`10
`
`
`
`Selecting a compatible lens form is the first step that a POSITA
`would have taken to design a lens for a camera
`The Board has already determined that Dr. Moore agrees with Dr. Sasián that a
`POSITA would have started the lens design process by selecting a “suitable design”
`
`•
`
`IPR2019-001140, Final Written Decision at 37 (in response to Sur-Reply at 12);
`see also APPL-1020 (Smith) at 9.
`
`•
`
`This factual finding is consistent with Smith (APPL-1020) which establishes why a
`POSITA would scale a lens.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`APPL-1020 (Smith) at 9.
`
`11
`
`11
`
`
`
`Corephotonics contradicts Dr. Moore’s conclusion that there was
`“rich literature” of miniature telephoto lenses in 2013
`
`• Dr. Moore concludes that a POSITA “would not have been motivated to go beyond rich literature of
`miniature lens designs” in scaling Kawamura and Ogata but cites to no evidence or alternative.
`
`There was also no shortage of miniature lens designs for a POSITA
`to use or to improve on: “[t]he patent literature has hundreds of
`lens design examples
`for mobile phone lenses and their
`forerunners, personal digital assistants.” (Ex. 2006, Sasian at 190.) A
`POSITA would not have been motivated to go beyond rich literature
`of miniature lens designs and try scaling old lenses, designed for
`different purposes, with little reason to expect the result would be
`manufacturable.
`
`Ex. 2015 (Moore Decl.) ¶ 79 cited in Patent Owner Response at 45.
`
`• Dr. Moore’s unsupported statement has since been contradicted by Corephotonics in
`another proceeding attempting to save patentability of a telephoto lens design.
`
`At the time of filing for the patent invention in
`this case (around 2013), there was almost no
`technology for mounting a telephoto lens
`assembly in a mobile terminal.
`
`Brief of Corephotonics at 6, Case No. 2020 Heo 6323
`(IPTAB (Korea) Aug. 2, 2021).
`
`Google Translate of highlighted Korean portion;
`certified translation pending.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`12
`
`12
`
`
`
`Kawamura uses a well-known telephoto lens form that
`satisfies Parulski’s suggested FOV of the telephoto lens
`
`• Kawamura is an Ernostar-type lens, a telephoto lens form known since the 1920s
`characterized by the largest air gap between the last two lens elements.
`
`Patent Owner Response at 24 and n.15.
`
`• Kawamura scaled for a 1/2.5” image sensor
`maintains a FOV of 24 degrees, similar to
`Parulski’s Tele lens.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`13
`
`13
`
`Petition at 23-24;
`see also APPL-1021 (Sasian Decl.) ¶ 45.
`
`
`
`Ogata is a well-performing, wide-angle lens that
`satisfies Parulski’s suggested FOV of the Wide lens
`
`• Ogata is a wide-angle lens and is suitable because of its short total length, low
`F#, and “excellent optical performance.”
`
`APPL-1026 (Ogata) at 3:1-6 cited in Petition at 25.
`
`• Ogata scaled for a 1/2.5” image sensor
`maintains a FOV of 63.4 degrees, similar
`to Parulski’s Wide lens.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`Petition at 29-30;
`see also APPL-1021 (Sasian Decl.) ¶ 39.
`
`14
`
`14
`
`
`
`Ogata and Kawamura scaled for a 1/2.5” image sensor
`are of suitable size for Parulski’s Digital Still Camera
`
`• Ogata scaled for a 1/2.5” image sensor has
`an EFL of 5.72 mm and a TTL of 6.89 mm,
`indicating a suitable wide-angle lens design
`for Parulski’s Digital Still Camera.
`
`• Kawamura scaled for a 1/2.5” image
`sensor has an EFL of 16.33 mm and a
`TTL of 15.34 mm, indicating a suitable
`telephoto lens design for Parulski’s
`Digital Still Camera.
`
`Petition at 27-28 citing Ex. 1021 (Sasián Decl.) ¶ 39.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`Petition at 20-21 citing Ex. 1021 (Sasián Decl.) ¶ 45.
`15
`
`15
`
`
`
`Dr. Sasián shows how a POSITA would have satisfied Dr.
`Moore’s made-up requirements
`
`APPL-1039 (Sasián Decl.) ¶24-31 cited in Petitioner Reply at 15-16;
`see also Ex. 2032 at 4 (distinguishing miniature camera modules because of these properties).
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`16
`
`16
`
`
`
`The Bates paper (APPL-1040) offers several examples of
`miniaturizing Ernostar-type lens forms like Kawamura
`
`• Bates describes how to miniaturize an
`Ernostar-type lens form found in the patent
`literature from the 1940s to 1960s.
`
`APPL-1040 at 5-6 cited in APPL-1039 (Sasián Decl.) ¶24-31 and Petitioner Reply at 15-16.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`17
`
`17
`
`
`
`Overview of Topics
`
`Patent Owner’s proposed construction is not supported by
`a plain reading or the embodiments in the specification
`A POSITA would have looked to Ogata and Kawamura
`because they satisfy Parulski’s suggested FOVs for each lens
`
`None of Patent Owner’s evidence addresses how a POSITA
`would have scaled Ogata and Kawamura for a Digital Camera
`Patent Owner’s evidence of secondary consideration
`has no nexus with the claims of the ’479 patent
`
`Patent Owner’s evidence is not credible and no evidence
`demonstrates commercial success, failure of others, or copying
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`18
`
`18
`
`
`
`Dr. Moore’s opinion is flawed because it is based on scaling
`Ogata and Kawamura for a different type of camera
`
`Petitioner Reply at 6-7
`A 1/2.5” image sensor has a
`diagonal of about 7.20 mm,
`which is more in-line with a
`Digital Still Camera.
`
`A 1/2.5” image sensor is not
`a Miniature Camera
`Module.
`
`This is consistent with the
`TLLs and EFLs of
`Ogata (TTL 6.89; EFL 5.72)
`and
`Kawamura (TTL 15.34; EFL
`16.33).
`
`7.20
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`Ex. 2015 (Moore Decl.) at 20.
`
`19
`
`19
`
`
`
`Patent Owner’s evidence showing difficulty in scaling is directed to
`lenses for Miniature Camera Modules, not Digital Still Cameras
`
`Ex. #
`2027
`(Sasián)
`2029
`(Reshidko)
`2031
`(Yan)
`2032
`(Clark)
`2033
`(Bareau)
`2034
`(Yan)
`
`Target lens design
`miniature format having a TTL of less than 5 mm
`
`Prior Art?
`N (2019)
`
`miniature format having a TTL of less than 5.5 mm
`
`N (2015)
`
`miniature format with a TTL of less than 5.2 mm
`
`N (2017)
`
`“extremely miniaturized module” in mobile phones
`
`N (2014)
`
`miniature format having a TTL of less than 5 mm for a
`1/4” image sensor
`miniature format requiring a TTL of 5 mm to 6 mm
`
`Y (2006)
`
`N (2019)
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`20
`
`20
`
`
`
`Ex. 2033 is not applicable to whether a POSITA would have
`scaled Ogata and Kawamura for a Digital Still Camera
`
`• Ex. 2033 (Bareau) is concerned with lens
`specifications for a miniature format
`having a TTL of less than 5 mm for a 1/4”
`image sensor.
`
`• Ex. 2033 (Bareau) addresses issues
`with designing a lens for a miniature
`format having a small TTL, such as
`5 mm.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`Ex. 2033 (Bareau) at 1 cited in Ex. 2015 ¶ 75;
`Patent Owner Response at 43; Sur Reply at 9.
`
`Ex. 2033 (Bareau) at 3.
`
`21
`
`21
`
`
`
`Ex. 2027 is not applicable to whether a POSITA would have
`scaled Ogata and Kawamura for a Digital Still Camera in 2013
`
`• Ex. 2027 does not evidence the knowledge of a
`POSITA in 2013 because it was published in 2019.
`
`Ex. 2027 (Sasián) at 1 cited in Ex. 2015 (Moore Decl.) ¶ 83;
`Patent Owner Response at 47; Sur Reply at 6.
`
`• Ex. 2027 states that it represents
`knowledge of a POSITA beyond
`2013.
`
`• Ex. 2027 addresses issues with
`designing a lens for a miniature
`format having a TTL of less than
`5 mm in 2012.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`Ex. 2027 (Sasián) at pdf p.13.
`
`Ex. 2027 (Sasián) at 188.
`
`22
`
`22
`
`
`
`Ex. 2029 is not applicable to whether a POSITA would have
`scaled Ogata and Kawamura for a Digital Still Camera in 2013
`
`• Ex. 2029 does not evidence the knowledge of a
`POSITA in 2013 because it was published in 2015 and
`addresses the “fast development” of miniature lenses.
`
`Ex. 2029 (Reshidko) at E216 cited in Ex. 2015 ¶ 72;
`Patent Owner Response at 41-42.
`
`Ex. 2029 (Reshidko) at E216.
`
`• Ex. 2029 addresses issues with designing a lens
`for a miniature format having a TTL of less than
`5.5 mm.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`Ex. 2029 (Reshidko) at E216.
`23
`23
`
`
`
`Ex. 2031 is not applicable to whether a POSITA would have
`scaled Ogata and Kawamura for a Digital Still Camera in 2013
`
`• Ex. 2031 does not evidence the knowledge of a POSITA
`in 2013 because it was published in 2017.
`
`Ex. 2031 (Yan) at 1 cited in Ex. 2015 (Moore Decl.) ¶ 81;
`Patent Owner Response at 46-47.
`
`• Ex. 2031 acknowledges the rapid development of miniature camera lenses up to 2017.
`
`• Ex. 2031 addresses issues with designing a lens for a miniature format with a TTL of less than 5.2 mm.
`
`Ex. 2031 (Yan) at 1.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`Ex. 2031 (Yan) at 1.
`
`24
`
`24
`
`
`
`Ex. 2032 is not applicable to whether a POSITA would have
`scaled Ogata and Kawamura for a Digital Still Camera in 2013
`
`• Ex. 2032 does not evidence the knowledge of
`a POSITA in June 2013 because it was
`published in December 2014.
`
`Ex. 2032 (Clark) at 1 cited in Ex. 2015 (Moore Decl.) ¶ 86-87;
`Patent Owner Response at 48-49.
`
`• Ex. 2032 addresses issues with designing lenses for “extremely miniaturized module” in mobile phones.
`
`• Ex. 2032 distinguishes miniature camera modules (MCM) from “larger cameras.”
`
`Ex. 2031 (Yan) at 1.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`Ex. 2031 (Yan) at 1.
`
`25
`
`25
`
`
`
`Ex. 2034 is not applicable to whether a POSITA would have
`scaled Ogata and Kawamura for a Digital Still Camera in 2013
`
`• Ex. 2034 does not evidence the knowledge of a
`POSITA in 2013 because it was published in 2019.
`
`Ex. 2034 (Yan) at 1 cited in Ex. 2015 (Moore Decl.) ¶ 82;
`Patent Owner Response at 47; Sur Reply at 6.
`
`• Ex. 2034 acknowledges significant
`technical development up to 2019.
`
`• Ex. 2034 addresses issues with
`scaling a conventional lens having
`a TTL of 124 mm for a miniature
`format having a TTL of 5 mm to 6
`mm.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`Ex. 2034 (Yan) at 77.
`
`Ex. 2034 (Yan) at 79-80.
`
`26
`
`26
`
`
`
`Overview of Topics
`
`Patent Owner’s proposed construction is not supported by
`a plain reading or the embodiments in the specification
`A POSITA would have looked to Ogata and Kawamura
`because they satisfy Parulski’s suggested FOVs for each lens
`
`None of Patent Owner’s evidence addresses how a POSITA
`would have scaled Ogata and Kawamura for a Digital Camera
`Patent Owner’s evidence of secondary consideration
`has no nexus with the claims of the ’479 patent
`
`Patent Owner’s evidence is not credible and no evidence
`demonstrates commercial success, failure of others, or copying
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`27
`
`27
`
`
`
`Alleged secondary considerations: no nexus
`
`Alleged Secondary
`Considerations
`praise/licensing
`
`commercial success
`
`failure of others
`
`copying
`
`Nexus
`
`Petitioner Reply at 18-27.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`28
`
`28
`
`
`
`No presumption of nexus because Patent Owner does not show
`evidence coextensive with the claims.
`
`• According to the Federal Circuit, nexus
`is only presumed when the product
`tied to the evidence “is the invention
`disclosed and claimed.”
`
`Petitioner Reply at 19.
`
`• None of Corephotonic’s evidence of
`“fusion technology” shows a fusion
`method that is recited in any claims of
`the ’479 patent.
`
`Ex. 2006 at 1;
`see also Ex. 2007 at 1; Ex. 2011; Ex. 2019; Ex. 2020.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`29
`
`29
`
`
`
`None of Patent Owner’s evidence is coextensive with the fusion
`methods or camera designs recited in the claims
`
`• No evidence is coextensive with the fusion
`method of limitation 1(e) that fuses two images
`to broaden the depth of field of the Wide image.
`
`• No evidence is coextensive with the fusion
`method that narrows the depth of field to
`represent a portrait image.
`
`APPL-1001 (’479 patent) at 13:40-50 (claim 1).
`
`APPL-1001 (’479 patent) at 13:40-50 (claim 19).
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`30
`
`30
`
`
`
`Patent Owner conflates any discussion of image fusion algorithms
`to the specific fusion methods in the challenged claims
`
`Ex. 2007 at 1.
`
`Ex. 2011 at 1.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`Ex. 2019 at 1.
`
`31
`
`31
`
`
`
`Patent Owner relies on the same arguments and evidence in
`several other cases involving different claims
`
`Petitioner Reply at 21; see also IPR2020-00905/906.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`32
`
`32
`
`
`
`Overview of Topics
`
`Patent Owner’s proposed construction is not supported by
`a plain reading or the embodiments in the specification
`A POSITA would have looked to Ogata and Kawamura
`because they satisfy Parulski’s suggested FOVs for each lens
`
`None of Patent Owner’s evidence addresses how a POSITA
`would have scaled Ogata and Kawamura for a Digital Camera
`Patent Owner’s evidence of secondary consideration
`has no nexus with the claims of the ’479 patent
`
`Patent Owner’s evidence is not credible and no evidence
`demonstrates commercial success, failure of others, or copying
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`33
`
`33
`
`
`
`Licensing evidence lacks a nexus to any of the claims
`
`Ex. 2010 at 1 cited in Petitioner Reply at 23-24.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`34
`
`34
`
`
`
`The evidence of industry praise is self-serving and
`lacks a nexus to any of the claims
`
`• No mention of any of the claimed technology.
`
`Patent Owner Response at n8.
`
`• No mention of any of the claimed technology.
`
`• And this statement is from an interested party.
`
`Patent Owner Response at n9.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`APPL-1038 ¶ 78.
`
`35
`
`35
`
`
`
`Patent Owner offered no evidence of
`commercial success related to the claims
`
`Petitioner Reply at 25.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`36
`
`36
`
`
`
`No evidence of failure of others.
`
`Petitioner Reply at 26.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`37
`
`37
`
`
`
`No evidence of copying by anyone
`
`Petitioner Reply at 26.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`38
`
`38
`
`Petitioner Reply at 27;
`see also APPL-1037 (Hart Depo) 191:11-23.
`
`
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