APPL-1042 / Page 1 of 61
`APPLE INC. v. COREPHOTONICS LTD.
`
`

`

`Written Submission
`
`
`
`Case
`
`2020Heo6323 Registration Invalidation (Patent)
`
`Plaintiff
`
`Corephotonics Ltd.
`
`Defendant LG Innotek
`
`
`
`Regarding the above case, the Plaintiff’s attorney hereby submits Written Response with
`arguments to the Defendant's Briefs dated February 8, 2021 and May 28, 2021 as below.
`
`Below
`
`1.
`
`Gist of Defendant’s claim and its unjustness
`
`fails to meet the requirement for the supporting description and the requirement for the
`
`The Defendant stated in the Brief dated May 28, 2021 that the corrected subject invention: ①
`description to enable one to easily embody the invention; ② fails to meet the requirement for
`clear and concise description of the claims; and ③ includes a reason for invalidation on new
`In addition, the Defendant stated again in the Brief dated February 8, 2021 that: ④ the corrected
`with the known technology (or Prior Art in Exhibit No. Eul-5,6); and ⑤ the corrected subject
`
`matter ground.
`
`subject invention loses inventive step in view of Reference 1 alone or Reference 1 combined
`
`invention is the same as Reference 2 and thus has a reason for invalidation on the ground of the
`violation of enlarged concept of novelty, because its application date is not retroactive to the
`priority date.
`
`However, the Defendant’s allegations are without merit.
`
`Hereinafter, we will provide supplementary explanations to the questions asked by the board at
`the hearing date on June 10, 2021, and then explain in detail how the Defendant's allegations are
`unjust.
`
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`Supplementary explanation to the questions of the board on the date of hearing on
`2.
`June 10, 2021
`
`A.
`
`Cameras that were applied to portable terminals at the time of filing the
`application of the invention of the subject patent
`
`The invention of the subject patent is the original technology for the telephoto lens
`assembly mounted on a portable terminal and is widely used until now.
`
`At the time of filing the application of the invention of the subject patent (around 2013),
`there was only one prior document that mounted the telephoto lens assembly on a
`portable terminal,1 and most of the camera manufacturers for portable terminals were
`trying to develop 'wide-angle lens assembly' rather than 'telephoto lens assembly’.2
`
`In paragraphs [0004] and [0005] of the specification of the subject patent, it describes
`that conventional lens assemblies comprising four lens elements are no longer sufficient
`for good quality imaging in a compact imaging lens system, and that US8,395,851 (that
`is, wide-angle lens assembly) using five lens elements suffers from the problem that the
`ratio between TTL and EFL is too large. This is because there were hardly any telephoto
`lens assemblies applied to portable terminals at the time the application of the invention
`of the subject patent was filed.
`
`Registered Patent No. 10-1757101
`
`Consumer demand for digital camera modules in host devices continues to grow. Cameras in cellphone devices
`in particular require a compact imaging lens system for good quality imaging and with a small total track length
`(TTL). Conventional lens assemblies comprising four lens elements are no longer sufficient for good quality
`imaging in such devices. The latest lens assembly designs, e.g. as in US 8,395,851, use five lens elements.
`However, the design in US 8,395,851 suffers from at least the fact that the ratio between TTL and an effective
`focal length (EFL) is too large.
`
`[0005]
`
`Therefore, a need exists in the art for a five lens element optical lens assembly that can provide a small
`TTL/EFL ratio and better image quality than existing lens assemblies.
`
`[Excerpt from the subject patent specification]
`
`
`1 Among the documents submitted by the Defendant, only one, that is, Reference 1 (Exhibit No. Eul-4) discloses the small
`telephoto lens assembly for portable terminals before the priority date of the invention of the subject patent. The Plaintiff has no
`additional information regarding this.
`2 The wide-angle cameras were applied to portable terminals in the late 1990s, and it was in the second half of 2017 when the
`telephoto cameras for portable terminals were actually applied. The fact that it took about 20 years until the telephoto camera
`were applied to portable terminal demonstrates the technical excellence of the invention of the subject patent.
`
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`In order to obtain sufficient image quality under the constrained environment of short
`total track length (TTL), the telephoto lens assembly applied to portable terminal required
`a new structure and shape different from those of the conventional telephoto lens
`assembly for general cameras.3 To this end, the invention of the subject patent adopted a
`
`Written Submission dated November 25, 2020).
`
`B.
`
`Relationship between the upper limit of TTL, the upper limit of F#, and the
`positive refractive power of the first lens element and TTL
`
`the 6.5 mm upper limit of TTL (related to TTL < 6.5 mm configuration) is related to the
`
`upper limit of F# is related to the maximum incident light amount of the lens assembly,
`
`new structure that: ① has a short total track length (TTL≤6.5 mm); ② has a focal length
`(EFL) longer than the total track length; ③ has an increased refractive power of the first
`lens element (f1<TTL/2); and ④ has an F# of less than 2.9 (See page 2, Plaintiff’s
`Regarding the configuration of TTL < 6.5 mm, TTL/EFL ≤ 1, F# < 2.9, f1 < TTL/2, ①
`limit of the lens assembly according to the thickness of the portable terminal, ② the 2.9
`and ③ there is correlation such that TTL decreases as the positive refractive power of the
`
`first lens element increases.
`
`However, in judging the inventive step, one should not look at whether or not each of the
`above configurations is individually disclosed in the prior art, but rather judge the
`inventive step on the basis of the overall invention in which each of the above
`configurations is organically combined.
`
`In Claim 1 of the corrected subject invention, the configurations of TTL < 6.5 mm,
`TTL/EFL≤1, F# < 2.9, and f1 < TTL/2, and so on are organically combined, thus
`enabling a small telephoto lens assembly for portable terminal to obtain high image
`quality, and a high-quality image can be obtained, with a distortion error of the obtained
`image within 2% that is not perceptible to the human eye. This is also confirmed in the
`drawings of the subject patent, that is, in FIGS. 1b, 1c, 2b, 2c, 3b, 3c, and so on. FIGS. 1b
`and 1c are shown below as representative examples.
`
`
`3 If the telephoto lens assembly for a general camera is reduced as it is, the area of the image pickup device corresponding to the
`film becomes extremely narrow, and a good image cannot be obtained (See pages 19-20, Plaintiff’s Written Submission dated
`May 25, 2021). This is also clearly stated in Exhibit No. Eul-6-1 which was submitted by the Defendant.
`
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`
`
`(FIG. 1b)
`
`(FIG. 1c)
`
`
`Each part of the sensor has the maximum
`modulus of the OTF4 near the focal point
`(0 mm), so the image is clear
`
`
`
`Showing up to 1.5% image distortion,
`which is less than 2% that is perceptible to
`the human eye
`
`C.
`
`How low a person of ordinary skill in the art would currently consider the
`‘Lower limit of TTL’ to be
`
`As shown in the table below, at the time of the priority date of the invention of the
`subject patent (July 4, 2013), the lower limit of the thickness of the portable terminal was
`6.5 mm or greater. Considering the development of the technology of parts for the
`operation of portable terminals and the number of lenses installed in the wide-angle and
`telephoto lens assemblies, the thickness of the current portable terminal (or the maximum
`lower limit of TTL) is estimated to be 4.5 mm to 5 mm.
`
`[Table of thicknesses of portable terminals by portable terminal manufacturers at the time of
`priority date of the invention of the subject patent]
`
`
`4 OTF, which is the abbreviation of the optical transfer function, is the function that represents spatial frequency transmission
`capability of an optical system such as a lens, and it refers to a method of displaying resolution (Reference 1. Science
`Encyclopedia, search result screen for “response function”)
`
`
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`Manufacturer
`
`Model Name
`
`OPPO
`Fujitsu
`Huawei
`Apple
`Samsung
`SONY
`
`X907
`Arrows ES IS12F
`Ascend Pls
`iPhone 5
`Galaxy S4
`Xperia Z Ultra
`
`Release
`Date
`2012.06
`2012.01
`2012.01
`2012.09
`2013.03
`2013.06
`
`Smartphone
`Thickness
`6.65 mm
`6.7 mm
`6.68 mm
`7.6 mm
`7.9 mm
`6.5 mm
`
`Remark
`
`Reference 2
`Reference 3
`Reference 4
`Reference 5
`Reference 6
`Reference 7
`
`In recent years, technologies have been developed to overcome limitations due to the thickness
`of portable terminals by adopting a method of bending the lens arrangement direction at right
`angles from the thickness direction to the width direction of the portable terminal, or a method of
`increasing the number of cameras.
`
`Reference 8. Samsung Homepage Folded Lens Screen
`The lens requires additional space for its vertical structure, and this makes the camera thicker. However, since the folded
`lens uses a prism like the periscope principle, it can sit flat on the bottom of the smartphone camera. When the light
`entering through the back of the smartphone is transmitted to the lens by the prism, the folded lens having the lens structure
`horizontally aligned inside the phone refracts the light by 90 degrees to increase the focal length. In this way, the height
`and width of the camera are reduced, realizing the innovative zoom performance of the Galaxy S20 Ultra.
`
`
`Considering the thickness of the portable terminal currently expected by those of ordinary skill in
`the art (4.5 mm to 5 mm as the lower limit of TTL), the judgment of the trial decision (or the
`allegation of the creditor) that “the detailed description of the subject patent is not described in
`
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`such a manner that enables one to easily embody the TTL close to zero (0.1 mm or less) and F#
`close to zero (10-3 or less)” is entirely meritless, as it assumes extreme cases that undermine the
`technical significance of the invention of the subject patent.5
`
`D.
`
`Regarding how the numerical values of configurations of the 6.5 mm upper limit of
`TTL and the 2.9 upper limit of F# of Claim 1 of the corrected subject invention are set
`
`A very important consideration for the compact telephoto lens assembly mounted on the
`portable terminal is the thickness (the length of TTL) of the compact portable terminal to which
`the telephoto lens assembly is mounted, which is different from the general lens assembly that
`has no particular restrictions on the length of the TTL. Another important consideration is
`whether the small telephoto lens assembly can provide a large amount of light to realize high-
`definition image, but this is not a problem for the conventional wide-angle lens assembly with a
`short focal length because it would not have a lack of amount of light. In other words, for the
`telephoto lens assembly mounted on a small portable terminal, the values of TTL and F# have
`technical significance at their upper limits.
`
`At the time of filing the invention of the subject patent (around 2013), there was almost no
`technology for attaching the telephoto lens assembly to the portable terminal, and the inventors
`of the invention of the subject patent studied a compact telephoto lens assembly that can be
`mounted to the compact portable terminal and obtain high quality image and, as a result, arrived
`at the optimal upper limit of TTL and upper limit of F#.
`
`The numerical range of TTL can be derived from the statement6 “TTL is smaller than the EFL”
`in the Detailed Description of this patent and the TTL values of the Examples.
`
`That is, in the embodiments where TTL < EFL and EFL = 6.90 mm (Embodiment 1), 7 mm
`(Embodiment 2), and 6.84 mm (Embodiment 3), sufficiently high-quality images were obtained
`at least at TTL < 7 mm. In addition, in the embodiments, it was confirmed that good images can
`still be obtained even with TTL=5.904 mm (Embodiment 1), 5.90 mm (Embodiment 2), and
`5.904 mm (Embodiment 3) which are thinner, and then the upper limit of TTL was reduced to
`
`
`5 The Patent Court’s Decision 2018 Heo 2700 on August 30, 2018 ruled that “it is not acceptable to assume the extreme cases
`that undermine the technical significance of the invention of the subject patent and require the description of the invention
`describe even those cases to the extent that they can be embodied”.
`6 Exhibit No. Kap-3 paragraph [0009]
`
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`6.5 mm that is smaller than 7 mm so that a sufficiently good image can be obtained even when
`the elements are organically combined.7
`
`Regarding F#, the condition of F#<2.9 is derived from the description “the lens assembly has an
`F number F#<3.2” (Exhibit No. Kap-3 paragraph [0009]) and from F# = 2.80 (Embodiment 1),
`2.86 (Embodiment 2), and 2.80 (Embodiment 3) (as the embodiments for obtaining a sufficient
`amount of light to obtain good image quality in a compact telephoto lens assembly for a portable
`terminal where TTL is 6.5 mm or less and TTL/EFL is less than 1). Meanwhile, since the image
`sensor used in portable terminals has a size limitation, the upper limit of F# is limited to 2.9 that
`is smaller than 3.2 to ensure sufficient amount of light even when the number of pixels of the
`image sensor is increased8 to enhance resolution under limited area conditions.
`
`E. Whether it is a technical problem to make the TTL smaller and the F# smaller in
`light of the common sense in the technical field of lenses
`
`Since the technical concept of the telephoto lens assembly for a portable terminal was different
`from the general telephoto camera in many ways, at the time of filing for the invention for the
`subject patent, a person of ordinary skill in the art did not think that the telephoto lens assembly
`could be installed in the portable terminal. Therefore, a person skilled in the art at the time was
`not even aware of the “technical problem of having a small TTL, while making TTL smaller than
`EFL and making F# smaller” as a technical problem to develope a telephoto lens assembly for a
`portable terminal.
`
`Also, at the time of filing for the invention of the subject patent, the person of ordinary skill in
`the art was not able to anticipate that the telephoto lens assembly for a portable terminal, which
`“has a small TTL that allows installation in the portable terminal, while having the TTL smaller
`than EFL and having a smaller F#”, can obtain good images as shown in FIGS. lb, 1c, 2b, 2c, 3b
`and 3c.
`
`If one deems that “having a small TTL that allows installation in the portable terminal, while
`making TTL smaller than EFL and making F# smaller” is a general technical problem in this
`
`
`7 This indicates the fact that the invention of the subject patent is used for the portable terminals, and that it is such a telephoto
`lens assembly that, unlike the typical telephoto camera, is good to be mounted to a very thin terminal, that is, to the portable
`terminal with the thickness (6.5 mm or larger) at the time of priority date of the invention of the subject patent.
`8 Each pixel becomes smaller.
`
`
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`field based on the present time when the telephoto lens assemblies for portable terminals are
`generally used, this is a typical hindsight bias, since he judges so based on hindsight on the
`premise that a person skilled in the art is aware of the technology disclosed in the specification of
`the subject patent.
`
`3.
`
`Refutation to Defendant's claim
`
`A.
`
`There is no contradiction in the Plaintiff's arguments for the lack of
`description and the inventive step.
`
`According to the Defendant, the Plaintiff made contradictory arguments by saying that,
`for the inventive step, a person skilled in the art cannot arbitrarily change the
`configuration of the lens assembly, whereas against the lack of description, the
`configuration of the lens assembly can be arbitrarily changed (see page 70, Defendant's
`argument dated June 10, 2021).
`
`[page 70, Defendant’s argument dated June 10, 2021]
`
`
`
`However, the Defendant's allegation is without merit.
`
`Enablement requirement (that is, lack of description) is a test to determine whether or not a
`person skilled in the art can easily embody the invention described in the claim by referring to
`the description of the specification of the patented invention and the level of technology at
`
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`the time of filing. Therefore, it is not technically difficult for a person skilled in the art to modify
`the rest of the lens configurations based on the core configuration proposed by the patented
`invention by referring to the technical level at the time of filing and the description of the
`specification of the subject patent.
`
`On the other hand, whether there is difficulty of configuration (that is, inventive step) is a test
`to determine whether it is easy for a person skilled in the art without knowledge of the
`configuration of the invention of the subject patent to derive the configuration of the invention of
`the subject patent from the earlier inventions at the time of filing. Since there is a fundamental
`difference in the technical idea between the invention of the subject patent and the References,
`and since the specific configurations are also different, a person skilled in the art cannot derive
`all or part of the configuration of the invention of the subject patent from the References (or by
`modifying configurations of the References).
`
`Therefore, the Plaintiff's argument is not contradictory at all.
`
`B.
`
`The Defendant's assertion that the invention of the subject patent is not supported
`by the detailed description of the invention is without merit.
`
`The Defendant argues that since the refractive power combination
`(1)
`(positive/negative/negative/positive/negative) of the five lens elements is specifically described
`in the detailed description of the subject patent, the configuration of the lens assembly of a
`different combination is not supported by the detailed description of the invention (Defendant's
`Brief dated May 28, 2021 pages 3 to 5).
`
`However, all of the Defendants' above arguments are without merit.
`
`(2) With regard to the number of lenses, the technical problem of the invention of the subject
`patent is not limited to the combination of the refractive power of the five lens elements, but is to
`provide a compact telephoto lens assembly for a portable terminal which is thin (with a smaller
`TTL/EFL ratio) and capable of obtaining good images (for details, see pages 3 to 17, Plaintiff’s
`submission dated February 18, 2021).
`
`The detailed description of the subject patent describes the need for a compact telephoto lens
`assembly capable of obtaining a good image with a thin thickness even when it exceeds four lens
`
`
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`elements (Exhibit No. Kap-3 paragraphs [0004], [0005]), and it does not necessarily limit to the
`optical lens assembly of five lens elements.
`
`In addition, the subject patent simply states that the purpose of the patent is to provide a small
`telephoto lens assembly that can solve the conventional problems as the “problem to be solved”,
`and it does not limit the number of lens elements (Exhibit No. Kap-3 paragraph [0006]).
`
`Furthermore, since the invention of the subject patent describes an optical lens assembly
`comprising a 'fifth lens element' in the form of an open claim as an 'embodiment' (Exhibit No.
`Kap-3 paragraph [0007]), it does not limit the number of lens elements to five.
`
`According to the Defendant's argument, all configurations of the lens assembly described as the
`embodiments in the detailed description of the invention should be described in the independent
`claim, but this is against the Enforcement Decree of the Patent Act9 stipulating that the invention
`can be divided and entered as independent and dependent claims and the Supreme Court ruling
`that “the configuration described in the claims does not necessarily have to be described in the
`detailed description or drawings of the invention” (Supreme Court Decision10 2003Hu2072 on
`November 24, 2006).
`
`We note the Defendant himself has also registered a number of patents based on the claims
`further specifying the invention described as an embodiment in the detailed description of the
`invention.11
`
`(3) With regard to the refractive power combination, when considering the technical level at
`the time of filing of the invention of the subject patent and the description of the subject patent
`specification, details of 'a pair of second and third lens elements having negative optical power
`together' of the invention of Claim 35 of the subject case are either described in the detailed
`
`
`9 Article 5(1) of Patent Act Enforcement Decree
`10 “As long as the invention of the subject patent is described in such a manner that allows addition of other technologies to the
`elements explicitly described in the claims, although the detailed description or drawings of the embodiments of the inventions of
`Claims 17 to 22 of this case are expressed by adding a 'step of separating words and postpositions' which is not described in the
`claims, it should not be said that the inventions of Claims 17 to 22 mentioned above are not supported by the detailed description
`only under such circumstances.”
`11 See Exhibit Nos. Kap-10 and 11, each of the registered patent publications, and pages 4 to 6 of the Plaintiff’s Brief dated
`February 18, 2021.
`
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`description and drawings of the subject patent, or fully recognizable by those skilled in the art from
`the specification of the subject patent (Plaintiff’s Brief dated February 18, 2021 pages 9 to 10).
`
`Specifically, the detailed description of the subject patent states, “The relatively large distance
`between the third and the fourth lens elements plus the combined design of the fourth and fifth
`lens elements assist in bringing all fields' focal points to the image plane” (Exhibit No. Kap-3
`paragraph [0011]) and “the focal length of the first lens element f1 with positive refractive power
`is smaller than TTL/2” (Exhibit No. Kap-3 paragraph [0009]).
`
`This means that the light is refracted as it passes through the first lens element with positive
`refractive power (i.e., the converging lens) to be converged strongly at one point, and therefore,
`it has to travel relatively a long distance (a long distance between the third and fourth lens
`elements) until it passes through the fourth lens element.
`
`That is, anyone skilled in the art can easily figure out that, in order for the light to travel a long
`distance between the third and fourth lens elements and arrive at the fourth lens element, it is
`essential that the second lens element and the third lens element perform the function of a
`concave lens (negative refractive power) to spread light.
`
`Also, the fact that f2 of the second lens element and f3 of the third lens element may have a
`positive or negative value, respectively, correctly matches the description in the detailed
`description of the subject patent stating, “the minimal chromatic aberration are obtained by
`fulfilling the relationship 1.2x|f3| > |f2| > 1.5xfl”, where the values are expressed as absolute
`numbers (Exhibit No. Kap-3 paragraph [0010]).
`
`C.
`
`Even if the lower limit of the TTL and F# values are not specified in the claims, a
`person skilled in the art can embody the corrected subject invention.
`
`The Defendant asserts that, without having the upper or lower limit of the numerical range
`set, a person skilled in the art cannot easily embody the invention described in the claims
`(Defendant’s Brief dated May 28, 2021 pages 7 to 10).
`
`However, the Defendant's above allegation is also without merit.
`
`
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`First of all, it can be assumed that a person skilled in the art in the subject case is “a person who
`has completed a master’s course in lens assembly technology and has about 2 to 3 years of
`industry experience”.
`
`The Defendant's assertion that a person skilled in the art cannot embody the invention of the
`relevant lens assembly just because the lower limit of TTL or F# is not stated seems far-fetched.
`
`As described above, the technical significance of the invention of the subject patent lies in the
`upper limit of TTL and F#, and for the lower limit of TTL and the lower limit of F#, a person
`skilled in the art can easily set as needed by considering physical limitations such as thickness
`and amount of light of the portable terminal.
`
`Therefore, as long as the technically important numerical value of the upper limit is specified, a
`person skilled in the art can of course practice the invention of the subject patent.12
`
`The similar cases from the patent offices in many other countries also agree that it is possible to
`embody the invention even when the configuration of the lower limit of TTL or F# is not
`described in the claims (Exhibit Nos. Kap-9, 28 to 34).
`
`If it is required to list all the possible numerical ranges as argued by the Defendant, it will lead to
`an unfair conclusion that the inventor should perform a number of unnecessary experiments to
`find meaningless lower limits.13
`
`D.
`
`The numerical ranges of TTL or F# of the invention of the subject patent are
`supported by the detailed description of the invention.
`
`The Defendant asserts that the invention of the subject patent fails to specify the lower limits of
`the numerical range of TTL (TTL ≤ 6.5 mm) and the numerical range of F# (F# < 2.9), and
`therefore, fails to meet the description requirement for the lack of support (Defendant's Brief
`dated May 28, 2021 page 6).
`
`However, the Defendant’s above allegation is also without merit.
`
`
`12 Patent Court Decision 2012Heo6700 on January 25, 2013 also ruled that it would be sufficient to specify only the upper limit
`or lower limit of the technically important numerical value, and it should not be said that the invention is unclear just because the
`technically insignificant lower limit or upper limit is not specified.
`13 In fact, it may not even be possible to ascertain whether there is any critical significance at the lower limit of such
`(meaningless) figures.
`
`
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`The Supreme Court consistently ruled that “whether a claim is supported by the detailed
`description of the invention should be judged by whether or not the matters corresponding to
`the matters described in the claims are described in the detailed description of the invention from
`the standpoint of those skilled in the art.” (Supreme Court Decision 2012Hu832 on September 4,
`2014).
`
`A person skilled in the art designing a lens system for a portable terminal will immediately
`recognize from the upper limit of the TTL that the invention of the subject patent is applied to a
`small portable terminal with a very thin thickness, and also easily understand that the upper limit
`of F# requires a sufficient amount of light in order to obtain good image quality with the small
`telephoto lens assembly for a portable terminal.
`
`Specifically, as explained in the Plaintiff’s Brief dated February 18, 2021 (page 26) and in this
`Written Submission (pages 6 to 7, Section 2. D), the configuration of “TTL≤6.5 mm” is derived
`from the description “TTL is smaller than the EFL” in the detailed description of the subject
`patent (Exhibit No. Kap-3 paragraph [0009]), and the EFL values in each of the embodiments
`(6.90 mm, 7 mm, 6.84 mm), and the TTL values in each of the embodiments (5.904 mm, 5.90
`mm, 5.904 mm). Therefore, the claims for the corrected subject invention are limited within the
`scope of the detailed description of the invention, and since the corresponding configuration is
`described in the detailed description of the invention, the configuration is fully supported by the
`detailed description of the invention.
`
`Furthermore, with respect to the numerical range of F#, “the configuration of the lens assembly
`having an F# smaller than 2.9” is derived from the description “the lens assembly has an F
`number F# < 3.2” in the means to solve the problem of the patented invention (Exhibit No. Kap-
`3 paragraph [0009]) and the F# values (2.80, 2.86, 2.80) in each of the Embodiments. The above
`configuration narrows the numerical range to sufficiently provide a large amount of light for
`high-definition realization within the numerical range described in the detailed description of the
`subject patent, and accordingly, it is also supported by the detailed description of the invention in
`the literal sense.
`
`
`
`13/30
`
`APPL-1042 / Page 14 of 61
`APPLE INC. v. COREPHOTONICS LTD.
`
`

`

`In addition, in light of the Patent Office Examination Guidelines14, which stipulates that the
`matters listed as claims in the claim part are the matters that the applicant wishes to be protected
`by the patent right on his/her own will among the inventions disclosed in the description of the
`invention, or the decision15 ruling that the applicant can freely decide which elements to describe
`in the claim part, the claims of the invention of the subject patent, which are selected within the
`numerical ranges described in the detailed description of the subject patent, are supported by the
`detailed description of the invention.
`
`The Patent and Utility Model Examination Guidelines state that, when determining whether the
`claims are supported by the detailed description of the invention or not, this is done by mainly
`reviewing whether the claim is outside the scope that a person with ordinary skill in the relevant
`technical field can grasp from the description of the invention.
`
`Exhibit No. Kap-35 Patent/Utility Model Examination Guidelines (Amendment December 14,
`2020. Patent Office Regulation No. 117)
`Whether corresponding matters are described in the description of the invention should be
`judged by examining whether or not an invention is being claimed in the claims beyond the
`scope of the invention that can be understood by those skilled in the art in consideration of the
`purpose of Article 42(4)1 from the description of the invention, rather than by examining the
`claims and the description of the invention are identical in text.
`
`
`14
`
`See lower half of page 2402 of Exhibit No. Kap-35, “2. Acknowledgement of the Invention”
`
`Matters listed as claims in the claim part are the matters for which the applicant wishes to be protected by the patent right on
`his/her own will among the inventions disclosed in the description of the invention in accordance with the claim description
`method of Articles 42(4) and (8) of the Patent Act.
`
`15
`
`
`
`Patent Court Decision 2009Heo4742 on December 24, 2009
`
`Article 42(4)(3) of the Old Patent Law, which requires that the claims of the patented invention describe only the matters
`essential to the constitution of the invention, should only be understood as not only forbidding to interpret, after grant, the
`scope with other elements that were not described at the time of grant as if such elements were originally described in the
`claims on the basis of the absence of the description of elements necessary for the constitution of the invention of the
`corresponding patent, but also confirming the fact that all the elements described in the claims should be understood as
`essential ele