`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`_____________
`
`Case IPR2020-00906
`U.S. Patent No. 10,225,479
`_____________
`
`Petitioner’s Motion to Submit APPL-1042
`under 37 CFR § 42.123(b)
`
`
`
`
`
`
`
`IPR2020-00906
`Petitioner’s Motion to Submit APPL-1042
`
`PETITIONER’S EXHIBIT LIST
`Updated: September 1, 2021
`
`APPL-1001 U.S. Patent No. 10,225,479 to Shabtay et al. (the “’479 Patent”)
`
`APPL-1002 Prosecution history of the ’479 Patent (the “’242 App”)
`
`APPL-1003 Declaration of Dr. Fredo Durand Ph.D.
`
`APPL-1004 CV of Dr. Fredo Durand
`
`APPL-1005 U.S. Patent No. 7,859,588 to Parulski et al. (“Parulski”)
`
`APPL-1006
`
`JP Patent Application Publication No. 2007-259108 to Soga
`(“Soga”), English Translation, Declaration, and Original
`
`APPL-1007
`
`Jacobs et al., “Focal Stack Compositing for Depth of Field
`Control,” Stanford Computer Graphics Laboratory Technical
`Report 2012-1
`
`APPL-1008 Prosecution history Morgan-Mar
`
`APPL-1009 U.S. Patent No. 8,989,517 to Morgan-Mar et al. (“Morgan-Mar”)
`
`APPL-1010 PCT Publication No. WO2013140359 to Shalon et al. (“Shalon”)
`APPL-1011 U.S. Patent Application Publication No. 2008/0030592 to Border et
`al. (“Border”)
`
`APPL-1012
`
`JPS5862609A to Kawamura (“Kawamura”)
`
`APPL-1013 Used in co-filed Petition
`APPL-1014 U.S. Patent No. 6,259,863 to Maruyama (“Maruyama”)
`JP Pub. No. 2013-106289 to Konno et al. (“Konno”), Certified
`English translation and Original
`APPL-1016 Ralph E. Jacobson et al., The Manual of Photography:
`photographic and digital imaging, 9th Edition, 2000 (“Jacobson”)
`
`APPL-1015
`
`
`
`-ii-
`
`
`
`IPR2020-00906
`Petitioner’s Motion to Submit APPL-1042
`
`APPL-1017 U.S. Patent App. Pub. No. 2010/0321511 to Koskinen et al.
`(“Koskinen”)
`APPL-1018 U.S. Patent No. 7,206,136 to Labaziewicz et al. (“Labaziewicz”)
`APPL-1019 Milton Katz, INTRODUCTION TO GEOMETRICAL OPTICS
`(2002) (“Katz”)
`APPL-1020 Warren J. Smith, MODERN LENS DESIGN (1992) (“Smith”)
`
`APPL-1021 Declaration of Dr. Jose Sasián, Ph.D.
`
`APPL-1022
`
`ZEMAX Development Corporation, ZEMAX Optical Design
`Program User’s Manual, February 14, 2011 (“ZEMAX User’s
`Manual”)
`
`APPL-1023 Used in co-filed Petition
`
`APPL-1024 Used in co-filed Petition
`
`APPL-1025 Used in co-filed Petition
`
`APPL-1026 U.S. Patent No. 5,546,236 to Ogata et al. (“Ogata”)
`
`APPL-1027 Used in co-filed Petition
`APPL-1028 Bae et al., “Defocus Magnification,” EUROGRAPHICS 2007,
`(“Bae”)
`
`APPL-1029 Specification sheet for Sony ICX629 image sensor (“ICX629”)
`
`APPL-1030 Specification sheet for Sony ICX624 image sensor (“ICX624”)
`
`APPL-1031 Used in co-filed Petition
`
`APPL-1032 Used in co-filed Petition
`
`APPL-1033 Product manual for Kodak Easyshare V610
`
`APPL-1034 Used in co-filed Petition
`
`APPL-1035 Robert E. Fischer et al., OPTICAL SYSTEM DESIGN (2008)
`
`
`
`-iii-
`
`
`
`IPR2020-00906
`Petitioner’s Motion to Submit APPL-1042
`
`APPL-1036 Email from Patent Owner’s counsel authorizing electronic service
`
`APPL-1037 Deposition transcript of John Hart, Ph.D., April 29, 2021
`APPL-1038 Declaration of Dr. Fredo Durand, Ph.D. in support of Petitioner’s
`Reply
`APPL-1039 Declaration of Dr. José Sasián, Ph.D. in support of Petitioner’s
`Reply
`
`APPL-1040
`
`Rob Bates, The Modern Miniature Camera Objective: An
`Evolutionary Design Path from the Landscape Lens, 2013
`(“Bates”)
`
`APPL-1041 Deposition transcript of Duncan Moore, Ph.D., March 11, 2021
`APPL-1042 Brief filed by Corephotonics in Korea on August 2, 2021 and
`certified translation
`
`
`
`
`
`-iv-
`
`
`
`IPR2020-00906
`Petitioner’s Motion to Submit APPL-1042
`
`Admitting supplemental evidence in an IPR proceeding under 37 CFR
`
`42.123(b) requires that the evidence “reasonably could not have been obtained
`
`earlier” and that considering it “would be in the interests-of-justice.” Id. APPL-1042
`
`is a brief Patent Owner (“PO”) submitted on August 2, 2021 in a Korean Patent
`
`Court proceeding (“Korean Brief”), so it could not have been obtained before
`
`Petitioner’s fact discovery period ended. Consideration of PO’s Korean Brief is in
`
`the interests-of-justice because: (1) PO has taken opposite positions in this
`
`proceeding, and (2) Apple could not have presented this admission previously.
`
`I. PO’s admissions in Korea directly contradict its positions here.
`PO in its Korean Brief concede that its representations to the Board in this
`
`proceeding are untrue. More than merely show that PO’s arguments and expert in
`
`this proceeding are unreliable and cannot be given any weight (which PO’s
`
`statements certainly do show), PO’s statements are party admissions. Because they
`
`were made in a judicial proceeding concerning the validity of its own patent, the
`
`interests-of-justice demand that PO be held to its admissions.
`
`Here, ¶79 of Dr. Moore’s declaration (Ex. 2015) parrots a paragraph from
`
`Patent Owner’s Response stating, word for word, that a POSITA: (1) “in or around
`
`2013 simply would not have looked to a 200-mm lens designed in 1981 in selecting
`
`a design for Parulski’s narrow lens;” (2) “would look to designs that were purpose-
`
`made for miniature cameras and that took advantage of three decades of
`
`
`
`-1-
`
`
`
`IPR2020-00906
`Petitioner’s Motion to Submit APPL-1042
`
`technological improvement;” and (3) “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.”
`
`POR at 45 (citing Moore Decl., ¶79). PO summarized these arguments in its Sur-
`
`Reply, stating: “a POSITA would have recognized that the result of scaling
`
`Kawamura was inferior in terms of materials, design, manufacturability, and
`
`performance to more current ‘well-known’ miniature telephoto lens designs.” Sur-
`
`Reply at 11. Notably, these representations were made to the Board in conclusory
`
`fashion, as PO and its expert failed to identify even a single miniature telephoto lens
`
`design out of this alleged “rich literature.” In sum, PO and its expert argue here that
`
`POSITAs would have had access to so many miniature telephoto designs that they
`
`would not have looked to scale conventional lens designs like Kawamura to
`
`implement a telephoto lens in Parulski’s digital camera (which is not limited to cell
`
`phones) at any time from Parulski’s disclosure in 2007 up to 2013.
`
`PO’s admissions in Korea contradict these arguments. On August 2, just a
`
`month ago and after the close of briefing in this proceeding, PO admitted to the
`
`Korean Patent Court that “there were hardly any telephoto lens assemblies applied
`
`to portable terminals” in 2013. APPL-1042 at pdf pp. 3, 8 (in 2013, “a [POSITA]
`
`did not think that the telephoto lens assembly could be installed in the portable
`
`terminal”); id. at 3 (in 2013, “there was only one prior document that mounted the
`
`
`
`-2-
`
`
`
`IPR2020-00906
`Petitioner’s Motion to Submit APPL-1042
`
`telephoto lens assembly on a portable terminal”). PO even explained that “it was in
`
`the second half of 2017 when the telephoto cameras for portable terminals were
`
`actually applied” and “that it took about 20 years until the telephoto camera were
`
`applied to portable terminal[s].” Id. at 3, n.2, 4.
`
`PO’s statements in Korea are highly relevant and potentially dispositive of
`
`PO’s main arguments here because they concede that miniature telephoto designs
`
`were not widely available in 2013 or prior, as PO and its expert have argued here.
`
`As a result, a POSITA would not have preferred (admittedly non-existent) miniature
`
`telephoto designs over, and would not have been dissuaded from adapting,
`
`conventional telephoto lens designs (like Kawamura) to implement a telephoto lens
`
`in a digital camera (like Parulski). In fact, PO admitted in Korea that non-portable
`
`terminals (i.e., those with track lengths greater than those required for smartphones)
`
`used the “structure and shape” of “the conventional telephoto lens assembly for
`
`general cameras.” Id. at 4 (“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.”); id. at
`
`4-5 (describing thicknesses of portable terminals in 2012-2013 being smartphones).
`
`PO’s admissions are consistent with Dr. Sasián’s testimony in his deposition
`
`and declarations that, while miniature telephoto lens designs in cell phones were
`
`
`
`-3-
`
`
`
`IPR2020-00906
`Petitioner’s Motion to Submit APPL-1042
`
`well known, these were not numerous and—more importantly—were not widely
`
`available to POSITAs in 2013. See Ex. 2042, 79:9-17 (“It may be very well that I
`
`said [that telephoto lens designs for mobile phones were well-known], but there is a
`
`difference between being well-known and being available, hundreds of them.”).
`
`PO should not be permitted to rely on misrepresentations here to secure a
`
`favorable result while making opposite statements before another tribunal. The
`
`Board therefore should admit and consider the Korean Brief here. See Ultratec, 872
`
`F.3d at 1271–75 (abuse of discretion where Board refused to admit and consider
`
`conflicting evidence); cf. Paice LLC v. Toyota Motor Corp., 504 F.3d 1293, 1312
`
`(Fed. Cir. 2007) (counsel statements weighed as evidentiary admissions).
`
`II. No undue prejudice because the Korean brief is PO’s own words.
`This evidence could not have been presented earlier, as PO waited until after
`
`Petitioner’s fact discovery period ended before making its contrary admissions in
`
`Korea. See Unified Patents v. MV3 Partners, IPR2019-00474, Paper 16 at 1-4
`
`(PTAB Aug. 5, 2019) (on rehearing, admitting transcript of hearing which
`
`occurred after FWD); cf. Ultratec, Inc. v. CaptionCall, LLC, 872 F.3d 1267, 1272
`
`(Fed. Cir. 2017) (“inconsistent testimony did not exist sooner”). There is no undue
`
`prejudice here, because this is PO’s own admissions submitted on the record before
`
`a judicial tribunal to save patentability of its own miniature telephoto lens design
`
`claiming priority to 2013, the same relevant time frame as the claims at issue here.
`
`
`
`-4-
`
`
`
`IPR2020-00906
`Petitioner’s Motion to Submit APPL-1042
`
`Dated: September 1, 2021
`
`HAYNES AND BOONE, LLP
`2323 Victory Ave., Suite 700
`Dallas, TX 75219
`
`Respectfully submitted,
`
`/Michael S. Parsons /
`Michael S. Parsons
`Reg. No. 58,767
`Lead Counsel for Petitioner
`
`
`
`-5-
`
`
`
`IPR2020-00906
`Petitioner’s Motion to Submit APPL-1042
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e)(4), the undersigned certifies that on September
`
`1, 2021, a complete copy of Petitioner’s Motion to Submit APPL-1042 (including the
`
`Korean Brief and certified translation, APPL-1042, attached per instructions from the
`
`Board) was filed electronically through the Patent Trial and Appeal Board’s E2E
`
`system and provided, via electronic service, to the Patent Owner at:
`
`Neil Rubin, nrubin@raklaw.com
`C. Jay Chung, jchung@raklaw.com
`Marc A. Fenster, mfenster@raklaw.com
`James S. Tsuei, jtsuei@raklaw.com
`RUSS AUGUST & KABAT
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`
`Jonathan Link, jlink@raklaw.com
`RUSS AUGUST & KABAT
`800 Maine Ave SW, Suite 200
`Washington, DC. 20024
`
`
`
`/Michael S. Parsons/
`Michael S. Parsons
`Reg. No. 58,767
`Lead Counsel for Petitioner
`
`Dated: September 1, 2021
`
`
`
`
`
`-6-
`
`
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
