Paper No. 51
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`____________
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`____________
`
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S MOTION TO
`SUBMIT APPL-1042 UNDER 37 C.F.R. § 42.123(B)
`
`
`
`i
`
`

`

`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`Petitioner’s motion to submit Ex. 1042 fails to meet the standard for late sub-
`
`mission of supplemental information under 37 C.F.R. § 42.123(b). In particular, it
`
`fails to meet the requirement that consideration of this untimely information “would
`
`be in the interests-of-justice.” § 42.123(b). Apple would have the Board conclude
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`from Ex. 1042 that “miniature telephoto designs were not widely available in 2013
`
`or prior.” Paper 50 at 3 (underlining added). But, that is not what the brief says, and
`
`nothing in Ex. 1042 contradicts Corephotonics’ arguments in this IPR.
`
`The statements in Ex. 1042 that Apple has latched on to concern telephoto lens
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`assemblies for “portable terminals.” Id. at 2–3. And those statements must be under-
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`stood in the context of the brief as a whole and of the legal dispute it concerns. LG
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`Innotek (LG) supplies a majority of the camera modules used by Apple, and Apple
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`accounts for a majority of LG Innotek’s revenue.1 Corephotonics sued LG in Korea,
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`alleging the camera modules it sells Apple infringe patent 10-1757101, which claims
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`priority to the same PCT application as the patents in IPR2018-01140 and -01146.
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`Apple and LG strongly share an interest in invalidating this patent asserted against
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`Apple’s camera modules.
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`LG brought a proceeding at the Korean IPTAB seeking to invalidate Corepho-
`
`tonics’ patent. In response, Corephotonics amended its claims to add limitations that
`
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`1 https://www.kedglobal.com/newsView/ked202106070009; https://asia.nikkei.
`com/Business/Electronics/LG-Innotek-invests-500m-to-boost-iPhone-parts-
`output; https://pulsenews.co.kr/view.php?sc=30800028&year=2021&no=238336
`
`1
`
`

`

`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`the TTL < 6.5 mm and F# < 2.9. The IPTAB rejected the amendments on grounds
`
`akin to U.S. § 112. Corephotonics sought review at the Patent Court, and Ex.1042
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`was filed in that Patent Court case.
`
`In context, the statements in Ex. 1042 concerning “portable terminals” are state-
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`ments about terminals that require a TTL < 6.5 mm. (Ex. 1042 at 4 (“the 6.5 mm
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`upper limit of TTL (related to TTL < 6.5 mm configuration) is related to the limit of
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`the lens assembly according to the thickness of the portable terminal”); id. at 5 (“at
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`the time of the priority date of the invention of the subject patent (July 4, 2013), the
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`lower limit of the thickness of the portable terminal was 6.5 mm or greater”); id. at
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`4–5 (“Table of thicknesses of portable terminals by portable terminal manufacturers
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`at the time of priority date of the invention of the subject patent” showing values
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`between 6.5 mm and 7.9 mm). Lenses with TTL < 6.5 mm were the legally relevant
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`category of lenses, given the limitations of the claims at issue, and Ex. 1042 regularly
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`equates lenses with TTL < 6.5 mm with lenses for “portable terminals.”
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`Assuming for the sake of argument that no telephoto lens with a TTL < 6.5 mm
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`had ever existed prior to the ’479 patent, that would be of little relevance to the
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`claims at issue in this IPR. The ’479 patent claims do not recite a TTL (beyond re-
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`quiring EFL/TTL > 1), and under Apple’s obviousness theory the claim are satisfied
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`by a lens scaled to have a TTL of 15.343 mm, much larger than the lenses for “port-
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`able terminals” discussed in Ex. 1042. (Paper 48, slide 15; Petition at 20–21.)
`
`2
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`

`

`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`For Apple to be permitted to argue that Corephotonics’ statements about lenses
`
`for “portable terminals” with TTL < 6.5 mm are binding “admissions” as to lenses
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`with larger TTL would be to permit a gross injustice. This is because this new posi-
`
`tion of Apple’s is directly opposite to one Apple has repeatedly taken to this Board.
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`In six different IPR petitions, where Apple has prevailed in the FWD or that are still
`
`pending, Apple has asserted that “lens assemblies for [mobile/cell] phones were well
`
`known, including telephoto [lenses/lens assemblies]” (IPR2018-01140, Pet. at 5;
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`IPR2019-00030, Pet. at 7; IPR2020-00896, Pet. at 4; IPR2020-00878, Pet. at 4;
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`IPR2020-00897, Pet. at 4), or “mobile devices with an integrated camera having
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`Telephoto and Wide lenses were well known” (IPR2020-00877, Pet. at 4). Across
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`these 6 petitions, Apple has cited at least 5 unrelated references—Ogino, Chen, Iwa-
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`saki, Hsieh, and Parulski—that predate the ’479 patent and that Apple alleges show
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`telephoto lenses in mobile phones or mobile devices. And in his deposition in this
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`very IPR, Apple’s expert again confirmed his view that “telephoto lens designs for
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`mobile phones were well-known prior to June 2013.” (Ex. 2042 at 79:3–80:2.)
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`Further, attached to this brief is a certified translation of LG’s brief submitted
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`in response to Ex. 1042. Pages 2–5 of LG’s brief respond to the statements in Ex.
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`1042 that Apple seeks to rely on in this IPR. Apple’s camera module supplier argues
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`in its brief that “it is clearly recognized that the telephoto lens assembly mounted on
`
`a mobile phone was researched and developed at least before 2005.” Att. at 2.
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`3
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`

`

`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`The LG brief shows that Corephotonics’ statement about “only one prior docu-
`
`ment that mounted the telephoto lens assembly on a portable terminal” in Ex. 1042
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`was based on an incompletely developed factual record. LG’s brief cites four new
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`prior art references that purportedly show telephoto lens assemblies in a mobile
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`phone. Att. at 2–5. In total, Apple’s lens supplier has cited five examples of a “tele-
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`photo lens assembly mounted on a mobile phone” that predate the ’479 patent:
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`Konno (a.k.a. Reference 1 in Ex. 1042 at 1), Kubota, Labaziewicz, Hideo, and
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`Yasauki (Att. at 2). Labaziewicz has a disclosure that overlaps with Parulski, but at
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`least nine of the examples of telephoto lens assemblies in mobile phones or mobile
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`devices by Apple and its supplier that predate the ’479 patent are unique.
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`Not only were the statements in Ex. 1042 addressing limitations of different
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`patent claims and a different factual record, but they also reflected a substantive law
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`of “inventive step” that is different from that in the U.S. and which excludes patent
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`applications from the inventive step analysis until they have been published. (See
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`KIPO Patent Examination Guidelines, January 2021 at 303–04, 341–43.)
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`The statements Apple points to in Ex. 1042 concern lenses with TTL < 6.5 mm,
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`something of little relevance to this IPR. The conclusion Apple asks the Board to
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`draw from them is contrary to Apple’s repeated statements to the Board and its ex-
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`pert’s sworn testimony. Admitting Ex. 1042 for the purposes Apple proposes would
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`be contrary to the interests of justice, and Apple’s motion should be denied.
`
`4
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`

`

`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`
`Dated: September 8, 2021
`
`Respectfully submitted,
`
`
`
` /Neil A. Rubin/
`Neil A. Rubin (Reg. No. 67,030)
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`Telephone: 310-826-7474
`
`Attorney for Patent Owner,
`COREPHOTONICS, LTD.
`
`5
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`

`

`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`CERTIFICATE OF SERVICE
`
`I hereby certify that “Patent Owner’s Response to Petitioner’s Motion to Submit
`
`APPL-1042 under 37 C.F.R. § 42.123(b)” was served on September 8, 2021 by email
`
`sent to:
`
`Michael S. Parsons
`Andrew S. Ehmke
`Jordan Maucotel
`Bethany Love
`Stephanie N. Sivinski
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`Telephone: 214-651-5000
`Email: michael.parsons.ipr@haynesboone.com
`Email: andy.ehmke.ipr@haynesboone.com
`Email: jordan.maucotel.ipr@haynesboone.com
`Email: bethany.love.ipr@haynesboone.com
`Email: stephanie.sivinski.ipr@haynesboone.com
`
`David W. O’Brien
`Hong Shi
`HAYNES AND BOONE, LLP
`600 Congress Ave. Suite 1300
`Austin, TX 78701
`Telephone: 512-867-8400
`Email: david.obrien.ipr@haynesboone.com
`Email: hong.shi.ipr@haynesboone.com
`
` /Neil A. Rubin/
`
`
`
`
`6
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`Attachment
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`City of New York, State of New York, County of New York
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`I, Shayna Himelfarb, hereby certify that the document “LGIT's Supplemental Brief (2)
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`dtd. 2021.08.12__DM_6172131_1” is, to the best of my knowledge and belief, a true and
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`accurate translation from Korean into English.
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`______________________
`Shayna Himelfarb
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`Sworn to before me this
`August 24, 2021
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`_____________________
`Signature, Notary Public
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`_____________________
`Stamp, Notary Public
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`LANGUAGE AND TECHNOLOGY SOLUTIONS FOR GLOBAL BUSINESS
`1250 BROADWAY, 32ND FLOOR, NEW YORK, NY 10001 | T 212.689.5555 | F 212.689.1059 | WWW.TRANSPERFECT.COM
`OFFICES IN 90 CITIES WORLDWIDE
`
`

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`Submitted by: Young Seon Yoo, Date & time of submission: August 12, 2021 7:13 PM, Printed by: Seung Min Shin, Date & time of download: August 13, 2021 8:58 AM
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`
`
`Date of adjudication August 26, 2021 2:00 PM
`
`
`A
`
`B
`
`C
`
`Chief
`judge
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`
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`
`
`Case
`Plaintiff
`Defendant
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`
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`
`
`2020 Heo 6323 Invalidation of registration (patent)
`Corephotonics Ltd.
`LG Innotek Co., Ltd.
`
`Reference document (2)
`
`August 12, 2021
`
`
`Defendant LG Innotek Co., Ltd.
`Counsel Kim & Chang Law Firm
`Attorney Yu Seog Won
`Attorney Jong Seok Kim
`Attorney Young Sun You
`Attorney Si Yeol Lee
`Attorney Ji Eun Kwon
`Patent Attorney Geum Wook Lee
`Patent Attorney Seon Geun Yoon
`Patent Attorney Dong Hyun Yang
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`
`
`To 3rd Division of the Patent Court of Korea
`
`Kim & Chang Law Firm
`39, Sajik-ro 8-gil, Jongno-gu, Seoul, Republic of Korea, (Postal code) 03170
`Tel: 02-3703-1114 Fax: 02-732-9034 E-mail: lawkim@kimchang.com
`Direct: 02-3703-4895 (Attorney Young Sun You) youngsun.you@kimchang.com
`02-3703-8517 (Office Manager Hyun Koo Woo) zhkwoo@kimchang.com
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`Submitted by: Young Seon Yoo, Date & time of submission: August 12, 2021 7:13 PM, Printed by: Seung Min Shin, Date & time of download: August 13, 2021 8:58 AM
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`
`
`
`Reference document (2)
`
`2020 Heo 6323 Invalidation of registration (patent)
`Corephotonics Ltd.
`LG Innotek Co., Ltd.
`
`
`
`Case
`Plaintiff
`Defendant
`
`With regard to the above case, the defendant's counsel submits opinion for reference as follows:
`
`
`Following
`
`1. Summary of this reference document
`
`
`While providing "a supplemental explanation on the question of the judge panel on the date for
`pleading of June 10, 2021" in the reference document dated August 2, 2021 (henceforth referred to as
`the "Plaintiff's reference document 1"), the plaintiff argues that the corrected invention doesn't have
`any reason for the invalidation of patent such as violation of description requirement and correction
`requirement, lack of inventive step and violation of expanded prior application. In addition, the
`plaintiff refutes in the reference document dated August 9, 2021 (henceforth referred to as the
`"Plaintiff's reference document 2") that the defendant's arguments in the reference document dated
`July 30, 2021 are all groundless.
`
`However, the plaintiff's above argument is either different from the fact or lacks in grounds so it is
`not reasonable. It will be discussed briefly below.
`
`
`2. Impropriety of the "supplemental explanation on the question of the judge panel on the date for
`pleading of June 10, 2021" in the Plaintiff's reference document 1
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`[logo:] Kim & Chang
`Law Firm
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`1 of 19
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`Submitted by: Young Seon Yoo, Date & time of submission: August 12, 2021 7:13 PM, Printed by: Seung Min Shin, Date & time of download: August 13, 2021 8:58 AM
`
`
`1. Impropriety of the plaintiff's argument concerning the "status of the camera which was applied
`to the mobile terminal device at the time of the application for the patented invention of this
`case"
`The plaintiff argues that the corrected invention of this case is the source technology for the telephoto
`lens assembly which is mounted on a mobile phone and the telephoto lens assembly was rarely
`applied to a mobile phone at the time of the application for the corrected invention of this case (Page
`2 of the Plaintiff's reference document 1).1 As its basis, it has pointed out that there is no preceding
`literature except for the comparable invention 1 (Defendant's Exhibit No. 4) about the telephoto lens
`assembly mounted on a mobile phone which was disclosed before the priority date of the corrected
`invention of this case (2013).
`
`However, the plaintiff's above argument is not true at all. As summarized in the following table, upon
`examining the evidences submitted by the defendant, it is clearly recognized that the telephoto
`lens assembly mounted on a mobile phone was researched and developed at least before 2005.
`
`
`
`
`
`
`The United States
`Publicized Patent Gazette
`No. 20130003195
`(Reference material 7)
`submitted as an evidence
`and referred to as the
`"comparable invention 1"
`in the invalidation trial of
`this case
`
`- Discloses the lens assemblies mounted on a mobile phone(Refer to
`the translation of [0001] paragraph) and includes the telephoto lens
`assembly which is TTL < EFL as recognized by the plaintiff as well
`(Refer to the Numeric data 4)
`
`
`[0001] The present invention relates to an imaging lens to form images on
`the imaging component such as CCD sensor and CMOS sensor. More
`specifically, the present invention relates to an imaging lens which is
`appropriate to be mounted on cellular phone, digital still camera, mobile
`information terminal device, security camera, vehicle mounted camera
`and relatively small camera like network camera.
`
`[Page 48 of the plaintiff's written argument dated June 22, 2020 in the
`invalidation trial of this case]
`In other words, the comparable invention 1 discloses wide angle lens
`assembly and telephoto lens assembly, the telephoto lens assembly has a
`directionality of designing with an F# value larger than the wide angle
`lens assembly (In other words, the amount of light accepted is reduced),
`and this connotes a negative teaching that it is difficult to lower F# in the
`telephoto lens assembly.
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`
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`
`
`------------------------------------------
`1 Besides, the plaintiff argues that the corrected invention of this case has been being used widely until
`not and most of the manufacturers of the cameras for mobile phone were making efforts to develop
`wide angle lens assembly rather than telephoto lens assembly at the time of the application of the
`corrected invention of this case, but since its grounds are not presented and it has nothing to do with
`the issue of this case, the rebuttal to that is omitted.
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`[logo:] Kim & Chang
`Law Firm
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`Submitted by: Young Seon Yoo, Date & time of submission: August 12, 2021 7:13 PM, Printed by: Seung Min Shin, Date & time of download: August 13, 2021 8:58 AM
`
`
`
`
`"Patent document 1"
`quoted in the
`comparable invention 1
`(Reference material 8)
`
`
`
`[Page 47 of the plaintiff's oral hearing document dated July 21, 2020 in
`the invalidation trial of this case]
`} Plaintiff’s Exhibit No. 4: United States Publicized Patent Gazette No.
`2013/00003195
`Contents of the disclosure of the comparable invention 1
`l Disclosed six embodiments
`è The numerical data 4 is TTL/EFL < 1.0 , but F# = 3.79
`- "Japanese Patent Publication No. 2008-530954 Gazette" disclosed in
`2008
`- Disclosed a telephoto lens assembly mounted on a mobile phone
`(Refer to the translation of the paragraphs [0086] to [0087] and FIGs.
`23B and 24A)
`
`[0086] (omitted) The rear view of mobile phone 600 illustrated in FIG.
`23B illustrates a few internal components having mobile phone image
`capture part 610 connected with a mobile phone processing group which
`has mobile phone processor 90 and modem 92 through image processor
`50 (illustrated in FIG. 1). (omitted)
`The mobile phone image capture part 610 is illustrated in FIGs. 24A and
`24B. FIG. 24B is the top view of the part 610 taken along the line 24B -
`24B in FIG. 24A.
`[0087] Part 610 has an integrated package of optical and image
`components on the common substrate 620. More specifically, the part 610
`has the first fixed focal distance lens 61, the first image sensor 614, the
`second fixed focal distance lens 616 and the second image sensor 618.
`The first lens 612 is desirably a fixed focal distance wide angle lens (like
`40 mm equivalent lens) and forms image on the first image sensor 614. In
`addition, the second lens 616 is desirably a fixed focal distance telephoto
`lens (like 100 mm equivalent lens 2) and forms image on the second
`image sensor 618. (omitted)
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`
`[FIG. 23B]
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`[FIG. 24A]
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`----------------------------------------
`2 Those recorded on the reference material 8 are not the actual focal distance of each lens but the focal
`distance converted on the basis of 35 mm film.
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`Law Firm
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`Submitted by: Young Seon Yoo, Date & time of submission: August 12, 2021 7:13 PM, Printed by: Seung Min Shin, Date & time of download: August 13, 2021 8:58 AM
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`
`"Patent document 2"
`quoted
`in
`the
`comparable invention
`1
`(Reference material 9)
`
`
`- "Japanese Patent Publication No. 2005-99265 Gazette" disclosed in 2005
`- Disclosed a telephoto lens assembly mounted on a mobile phone (Refer
`to the translation of the paragraphs [0032] to [0033] excerpted below and
`FIG. 1B)
`
`
`[0032] Imaging systems 10A, 10B and 10C are placed to be adjacent to
`each other so that they can shoot the same subject. More specifically, the
`imaging lenses 25A, 25B and 25C in the imaging systems 10A, 10B and
`10C are placed to be adjacent to each other toward the same subject side
`and to have approximately the same optical axis. (omitted)
`[0033]
`The imaging lenses 25A, 25B and 25C are configured with unifocal lenses
`of which the focal distances are different from each other, e.g. unifocal
`lenses with the focal distance f of 35 mm (for wide angle), 70 mm3 (for
`telephoto), and 50 mm (for intermediate range). (omitted)
`
`
`[FIG. 1B]
`
`
`
`
`- "Japanese Patent Publication No. 2007-30628 Gazette" disclosed in 2007
`- Disclosed a telephoto lens assembly which is mounted on a camera
`module used in a mobile phone, etc. in which EFL (focal distance) is 7.94
`mm, TTL (optical length f as illustrated in FIG. 3) is 6.5 mm and TTL <
`EFL (Refer to the translation of paragraphs [0032] to
`[0033] excerpted below and FIG. 1(a), FIG. 1(b) and FIG. 3)
`
`[0002] Recently, camera modules are widely used for mobile phone,
`portable terminal device (personal digital assistant) or card camera. In
`addition, even these imaging lenses are requiring optical zoom function
`which can change focal distance rather than unifocal. (omitted)
`[0033] The second lens unit 22 is composed of the lens group 22a and the
`body tube 22b, and FIG. 3 illustrates the placement of the optical system. As
`illustrated in FIG. 4, the second lens unit 22 is a lens unit on the telescopic
`side (2.2 times) equipped with the lenses 32a, 32b and 32c, and its focal
`distance is 7.94 mm, its angle of view S is 28 degrees, and its optical length f
`is 6.5 mm.
`
`
`
`"Patent document 3"
`quoted in the
`comparable invention
`1
`(Reference material 10)
`
`
`
`---------------------------------------
`3 Those recorded on the reference material 9 doesn't seem to be the actual focal distance of each but the
`focal distance converted on the basis of 35 mm film.
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`Law Firm
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`Submitted by: Young Seon Yoo, Date & time of submission: August 12, 2021 7:13 PM, Printed by: Seung Min Shin, Date & time of download: August 13, 2021 8:58 AM
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`[FIG. 1(a)]
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`[FIG. 1(b)]
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`[FIG. 3]
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`case and argues that the corrected invention of this case in Paragraph 1 shows an effect that can obtain
`images of good quality as illustrated in the Figures of the patent of this case 1b, 1c, 2b, 2c, 3b, 3c, etc.
`through the systemic combination of the above configurations (Pages 3 to 4 of the Plaintiff's reference
`document).
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`-----------------------------------
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`4 Among the above configurations, ① TTL ≤ 6.5 mm, ② TTL/EFL < 1, and ④ F# < 2.9 are target
`
`values (specifications) so they are meaningless as components, and it has already been explained in
`detail that f1 < TTL/2 is merely one which has often been used in accordance with the design
`principle of the well-known or commonly used 'telephoto design method' (Refer to Section II on
`pages 1 to 3 and Section III.1.a on pages 4 to 13 of the Defendant's preparatory document).
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`2. Impropriety of the plaintiff's argument about the “relation of the upper limit of TTL, the upper
`limit of F# and the positive refractive power with TTL”
`
`The plaintiff has repeated its argument that ① TTL ≤ 6.5 mm, ② TTL/EFL < 1, ③ f1 < TTL/2, and
`④ F# < 2.9 are the configurations4 to resolve the technical problem of the corrected invention of this
`
`
`
`

`

`Submitted by: Young Seon Yoo, Date & time of submission: August 12, 2021 7:13 PM, Printed by: Seung Min Shin, Date & time of download: August 13, 2021 8:58 AM
`
`
`Even if it is assumed that images of good quality can be obtained from the above drawings to try to
`accommodate the argument to the maximum,5 the above drawings don't show the results obtained from
`the above four configurations only by the plaintiff but merely show the results obtained respectively by
`each of the three embodiments in which all means of solution described in the specifications of the patent
`of this case including 5 pieces of lenses and the refractive power combination of positive/ negative/
`negative/ positive/ negative, so they can't be the grounds of the recognition of the inventive step of the
`corrected invention of this case.
`
`3. Impropriety of the plaintiff's argument on “'the lower limit of TTL' accepted currently by the
`persons with ordinary skill in this art”
`
`
`The plaintiff argues that "the lower limit of the thickness of a portable terminal device at the time of the
`priority date of the patented invention of this case (July 4, 2013) was 6.5 mm or above," and "the current
`thickness of a portable terminal device (or the maximum lower limit of TTL) is expected to be 4.5 mm to
`5 mm" (Page 4 of the Plaintiff's reference document 1).
`
`However, all information provided as the grounds of this argument are merely the thicknesses of a few
`mobile phones launched into the market before the priority date, and the lower limit of the thickness of
`current mobile phones has been presented not as a specific number but merely as an "expected range"
`without any grounds. In addition, the lower limit of the thickness of a mobile phone is determined by
`various factors (size and placement of other parts) as well as the TTL lower limit of lens assembly, so the
`lower limit of the thickness of a mobile phone can't be considered to be the same with the TTL lower
`limit of lens assembly.
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`5 Since the level of improvement of the effect can't be found as a comparative example that can be
`compared with the embodiments has not been given at all in the patent of this case, there is no way to
`find how much the quality of image would be improved when the means of solution of the patent of
`this case are applied compared to when they are not applied.
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`Submitted by: Young Seon Yoo, Date & time of submission: August 12, 2021 7:13 PM, Printed by: Seung Min Shin, Date & time of download: August 13, 2021 8:58 AM
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`Above all things, the plaintiff argued on the date for pleading that the "physical lower limit of TTL" self-
`evident to the person with ordinary skill in this art existed at the time of the priority date (July 4, 2013)
`of the corrected invention of this case, but it was not mentioned at all what the lower limit was and what
`was the reason why the lower limit existed and the "physical lower limit of F#" was not mentioned at all
`either. Further, the plaintiff has acknowledged as a matter of fact that TTL is a target value which is going
`lower gradually with the development of the "specifications" and technology required for the lens
`assembly for a mobile phone through the above argument that the lower limit of TTL got lower right now
`than the time of the priority date of the corrected invention of this case.
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`As a result, if the plaintiff's above argument is accepted, the corrected invention of this case will get to
`preoccupy even the areas to be achieved through the development of technology in the future with a
`patent without any disclosure of technology, so it is confirmed one more time that this has to be
`invalidated.
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`On the one hand, the plaintiff has kept arguing that it was unfair that a decision was made in the judgment
`of this case taking TTL value of 0.1 mm or below and F+ of 10-3 or below as examples (Pages 5 to 6 of
`the Plaintiff's reference document 1), but as long as the values mentioned in the judgment of this case
`belong the claims of patent, it is quite natural that the enabling description requirement should be
`satisfied, and for example, even if the values of TTL 5.0 mm and F# 1.4 or so are considered, the detailed
`description of the invention doesn't show any grounds at all by which even these values can be
`generalized and expanded for implementation without excessive experiment.7
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`4. Impropriety of the plaintiff's argument on "how the configuration of the upper limit of 6.5 mm
`of the TTL and the upper limit of F# of 2.9 of the corrected invention of this case prescribed in
`Paragraph 1 has been determined"
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`6 Refer to pages 3 to 4 of the Defendant's reference document dated July 30, 2021.
`7 Refer to Section III.2.(2) on page 18 of the defendant's written response dated January 25, 2021.
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`Submitted by: Young Seon Yoo, Date & time of submission: August 12, 2021 7:13 PM, Printed by: Seung Min Shin, Date & time of download: August 13, 2021 8:58 AM
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`The plaintiff tries to give an explanation on how the upper limit of 6.5 mm of the TTL and the upper limit
`of F# of 2.9 have been determined (Pages 6 to 7 of the Plaintiff's reference document 1), but they still
`doesn't provide any explanation at all on the technical meaning of those specific values.8
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`Upon straightening up the plaintiff's argument, the values were determined at the levels lower than the
`upper limits (TTL < EFL = 7 mm, F# < 3.2) specified in the specifications or calculated from the
`information on the specifications referring the values of embodiments (TTL = 5.904, 5.90, 5.904 mm, F#
`= 2.80, 2.86, 2.80). However, unlike the values of TTL and F# (TTL of 6.6 mm or 6.4 mm, or F# of 2.85
`or 2.95) based on this argument of the plaintiff, they still fail to explain the technical meaning of the
`specific values of TTL 6.5mm and F# 2.9.9
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`As a result, the upper limits of TTL and F# of the corrected invention of this case should be
`considered to have been determined with an intent to cut out the scope of claims to suit the expected
`specifications rather than any technical reason based on the specifications.10
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`5. Impropriety of the plaintiff's argument on “whether or not downsizing TTL and F# is a
`technical objective in light of the technical common sense in the area of lens”
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`8 The plaintiff failed to explain the technical meaning of the specific values of TTL 6.5 mm and F# 2.9
`in the Plaintiff's reference document 2 as well but merely is suggesting other patents which have
`nothing to do with the issues of the grounds of the invalidation of the corrected invention of this case
`related to them (issue of the supporting description requirement of "whether the contents described in
`the detailed description of the invention can be generalized and expanded to the description of the
`claims of the patent of this case" and issue of the enabling description requirement of "whether the
`specifications have been written to ensure that the implementation is possible over the entire range of
`values") (Pages 3 to 6 of the Plaintiff's reference document 2).
`9 As argued by the plaintiff, if the corrected invention of this case is a "source technology" and the
`scope of TTL values and the scope of F# values of the corrected invention of this case have been
`deduced newly as the optimal values as a result of any research, the technical meaning of the scope of
`TTL values and the scope of F# values is not to be explained now but should have been described in
`the specifications of the corrected invention of this case at first.
`10 Refer to pages 2 to 3 of the Defendant's reference document dated July 30, 2021.
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`Submitted by: Young Seon Yoo, Date & time of submission: August 12, 2021 7:13 PM, Printed by: Seung Min Shin, Date & time of download: August 13, 2021 8:58 AM
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`The plaintiff argues that the 'technical objective of the corrected invention of this case is to have a TTL
`that can be installed on a mobile phone and make TTL smaller than EFL and make F# smaller' and this
`couldn't be recognized by a person with ordinary skill in this art at the time of the application of the
`corrected invention of this case (Pages 6 to 7 of the Plaintiff's reference document 1).
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`However, the plaintiff's argument described above is based on the premise that a person with ordinary
`skill in this art couldn't even think about installing a telephoto lens assembly in a mobile phone at the time
`of the application of the corrected invention of this case, and as discussed in the Section II.1. before, it has
`been confirmed the research and development of the telephoto lens assembly for mobile phone had been
`conducted long before the priority date of the corrected invention of this case, so the plaintiff's
`argument described above is based on a premise that is different from the fact and thus, it is
`improper.
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`In addition, unlike the plaintiff's argument, please be advised that there isn't any description at all
`which indicates that "making F# smaller" is a technical objective of the corrected invention of this
`case in the specifications of the corrected invention of this case.
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`III.
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`1. Impropriety of the plaintiff's argument related to the supporting description requirement
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`Impropriety of the plaintiff's argument on the individual reason for invalidation11
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`a. The plaintiff has kept arguing that the technical objective or means of solution of the corrected
`invention of this case has nothing to do with the number of lenses (pages 9 to 10 of the Plaintiff's
`reference document 1 and pages 6 to 7 of the Plaintiff's reference document 2),12 but this is an
`argument that is clearly contrary to the description of the specifications of the corrected invention
`of this case which describes the technical objective and means of solution based on the premise of
`"5 lens elements" and presents only the embodiments of "5 lens elements", and the corrected
`invention of this case, which includes the number of lenses and refractive power
`combination different from the description in the specifications, doesn't satisfy the
`supporting description requirement.13
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`11 The plaintiff also keeps arguing that there is no contradiction in the plaintiff's arguments in the issue
`of improper description and the issue of inventive step (Pages 8 to 9 of the Plaintiff's reference
`document 1 and pages 1 to 3 of the Plaintiff's reference document 2). However, on the one hand, the
`plaintiff argues that it is legitimate that the composition of claims was written down by modifying and
`expanding the description of the specifications randomly (In other words, they are said to be the same
`technical contents), and on the other hand, they argue that the inventive step