Trials@uspto.gov
`571-272-7822
`
`
`Paper 60
` Entered: December 14, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner
`
`
`IPR2020-00906
`U.S. Patent No. 10,225,479 B2
`
`
`
`Before GREGG I. ANDERSON, JOHN F. HORVATH,
`MONICA S. ULLAGADDI, Administrative Patent Judges
`
`HORVATH, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 60
` Entered: December 14, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner
`
`
`IPR2020-00906
`U.S. Patent No. 10,225,479 B2
`
`
`
`Before GREGG I. ANDERSON, JOHN F. HORVATH,
`MONICA S. ULLAGADDI, Administrative Patent Judges
`
`HORVATH, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2020-00906
`Patent 10,225,479
`
`
`INTRODUCTION
`
`On November 8, 2021, we issued a Final Written Decision, finding
`Apple, Inc. (“Petitioner”) had failed to demonstrate by a preponderance of
`evidence that any of the challenged claims of U.S. Patent No. 10,255,479
`(“the ’479 patent”) were unpatentable because Apple had failed to show that
`Ogata’s1 lens could be scaled to work as a wide-angle lens in Parulski’s2
`digital camera. Paper 54 (Decision” or “Dec.”). Our conclusion was based
`on our observation that Petitioner’s declarant, Dr. Sasian, did not scale
`Ogata’s lens but a different lens having different lens prescription data,
`namely, a lens whose third lens element had an Abbe number that was 38%
`smaller than the Abbe number of Ogata’s third lens element. Id. at 15.
`Although Corephotonics (“Patent Owner”) had identified this discrepancy in
`its Patent Owner Response (Paper 16 (“PO Resp.”), 31), the Court of
`Appeals for the Federal Circuit found that because Corephotonics had only
`noted the error in the background section of its’ Response, our Decision
`violated the notice requirement due Petitioner pursuant to the Administrative
`Procedure Act (“APA”). Paper 59 (Apple Inc. v. Corephotonics Ltd., Case
`Nos. 2022-1350, 2022-1351, slip op. 15, 16 (Fed. Cir. 2023)
`(“Corephotonics I”)).
`On December 1, 2023, consistent with the procedures set forth in the
`Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov.
`2019)3 (“CTPG”), the parties held a conference call with the Board after
`having met and conferred to discuss a remand procedure. See CTPG, 87–90.
`
`
`1 U.S. Patent No. 5,546,236
`2 U.S. Patent No. 7,859,588 B2
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`2
`
`
`
`
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`IPR2020-00906
`Patent 10,225,479
`
`Participating in the conference call were Mr. O’Brien for Petitioner,
`Mr. Rubin for Patent Owner, and Judges Anderson, Horvath, and Ullagaddi.
`A number of issues were raised and discussed during the call, as summarized
`below.
`
`DISCUSSION
`1. Whether the Errors in the Sasian Declaration are Before the Board
`Petitioner argued that a threshold question on remand is whether the
`lens prescription data errors in the Sasian declaration are before the Board or
`are material to any decision on remand that would be APA-compliant.
`Therefore, Petitioner requested briefing on this question.
`According to Petitioner, the Federal Circuit found the Board’s
`Decision was not APA compliant because the Board addressed the lens
`prescription data errors in the Sasian declaration rather than the issue briefed
`by the parties during trial, namely, “whether there would have been a
`reasonable expectation of success in combining Parulski and Ogata,
`considering manufacturing and scalability concerns.” Corephotonics I at 17.
`Thus, Petitioner argues, the Federal Circuit instructed the Board to consider
`and decide the manufacturability of Ogata’s scaled lens in its decision on
`remand, which can be done on the current record without additional briefing
`or evidence.
`Patent Owner, by contrast, argued the Federal Circuit did not decide
`that it was improper for the Board to consider the errors in the Sasian
`declaration and that the Board should not simply ignore them for the purpose
`of simplifying the decision on remand. Instead, Patent Owner argued, the
`Board should determine whether and how the errors in the Sasian declaration
`impact the credibility of Dr. Sasian’s testimony in its decision on remand.
`
`
`
`3
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`IPR2020-00906
`Patent 10,225,479
`
`
`Upon consideration of the parties’ arguments, we find the Board
`would benefit from briefing regarding how the case on remand can be
`decided in an APA-compliant manner. Although the Federal Circuit found
`our Decision did not comply with the APA, it is not clear that the Federal
`Circuit instructed us to address only the manufacturability of the Ogata and
`Kawamura lenses on remand. For example, the Federal Circuit noted that
`“the Board is entitled to set aside technical expert testimony that if finds not
`scientifically reliable on the record” and is “free to make credibility
`determinations, weight the evidence, and decide for itself what persuades it,”
`provided the Board’s conclusions are “supported by substantial evidence”
`and “reached only after the parties have been provided fair notice and an
`opportunity to be heard.” Id. at 14.
`Accordingly, for the reasons stated above, each party shall be
`provided the opportunity to brief whether the decision on remand is limited
`to considering the manufacturability of the Ogata and Kawamura lenses or
`can consider other factors, including errors in the Sasian declaration.
`
`2. Should the Parties be Afforded Additional Briefing to Address Errors
`in the Sasian Declaration
`
`During the call, the parties were asked whether additional briefing
`was required to address the errors in the Sasian declaration and, if so, the
`scope of that briefing, including whether it can or should be accompanied by
`new evidence. As noted above, Petitioner argued that no briefing is required
`on this issue because it is not before the Board on remand. Nonetheless,
`Petitioner argued that should the Board order briefing on the issue only
`Petitioner should be permitted to submit briefing because only Petitioner’s
`
`
`
`4
`
`
`
`IPR2020-00906
`Patent 10,225,479
`
`APA rights were violated. Petitioner similarly argued that should the Board
`permit new evidence to be introduced, only Petitioner should be permitted to
`introduce new evidence. Patent Owner argued that if Petitioner is provided
`the opportunity to brief the errors in the Sasian declaration or introduce new
`evidence, fairness and the APA require the Board to provide Patent Owner
`with the same opportunity.
`We find additional briefing on the significance of the errors in the
`Sasian declaration would be helpful to the Board. We note that in addition
`to the Abbe number error for Ogata’s third lens element, discussed at length
`in our Decision (Dec. 13–16), Dr. Sasian’s declaration appears to contain
`additional errors with respect to Kawamura’s lens. According to Dr. Sasian,
`a person of ordinary skill in the art would have known that Kawamura’s
`example 1 lens could have been scaled to project an image onto a 1/2.5”
`image sensor that is compatible with Parulski’s digital camera. Ex. 1021
`¶¶ 42–45. But it appears that the lens prescription data for Kawamura’s lens
`that Dr. Sasian entered into the Zemax Lens Data Editor, shown in Figure
`4C of the Sasian declaration, differs from the lens prescription data for
`Kawamura’s example 1 lens. Compare Ex. 1012, 3 with Ex. 1021, p. 39. 4
`These differences are illustrated in the table below, where n is the index of
`refraction of a lens element and ν is its’ Abbe number:
`
`
`4 We refer here to page 39 of the Sasian declaration, labelled Fig. 4C –
`Prescription Data, under section A titled “Fig. 4 – Kawamura scaled to fill a
`1/2.5” image sensor using Zemax (v.02/14/2011).” Ex, 1021, pp. 37, 39.
`5
`
`
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`IPR2020-00906
`Patent 10,225,479
`
`
`Lens
`element
`
`1
`2
`3
`4
`5
`6
`
`Kawamura
`example 1
`(n,ν)
`1.60, 60.7
`1.67, 32.1
`1.49, 70.1
`1.58, 41.5
`1.75, 35.3
`no sixth lens
`element
`
`Appendix
`Fig. 4C
`(n,ν)
`1.62, 60.3
`1.67, 32.1
`1.66, 51.0
`1.66, 35.9
`1.76, 26.0
`1.62, 60.35
`
`
`Ex. 1012, 3; Ex. 1021, p. 39. As shown in the table, in addition to
`containing data for a sixth lens element that is not present in Kawamura’s
`example 1 lens, the lens prescription data apparently entered into the Zemax
`Lens Data Editor differs from the lens prescription data for Kawamura’s
`example 1 lens for nearly every lens element. Specifically, the first, third,
`fourth, and fifth lens elements have different indices of refraction and Abbe
`numbers, with the largest differences being the indices of refraction for the
`third (11% larger) and fourth (5% larger) lens elements and the Abbe
`
`
`5 Although the sixth lens element has the same index of refraction and Abbe
`number as the first lens element, it is not the same element because it has a
`different thickness. The first lens element (OBJ 1 in the Zemax Lens Data
`Editor) has a thickness of 0.422 lens units and the sixth lens element (OBJ
`11) has a thickness of 0.583 lens units. Ex. 1021, 39; see also Ex. 1022, 100
`(“Lens units defines the units of measure for dimensions in most of the
`spreadsheet editors. These dimensions apply to data such as . . .
`thickness.”).
`
`
`
`6
`
`
`
`IPR2020-00906
`Patent 10,225,479
`
`numbers for the third (27% smaller), fourth (13% smaller), and fifth (26%
`smaller) lens elements.
`Given the apparent lens data errors for the Ogata and Kawamura
`lenses in the Sasian declaration, the Board would benefit from additional
`briefing identifying all of the evidence in the current record that supports
`Petitioner’s contention that Ogata’s example 1 lens and Kawamura’s
`example 1 lens can be scaled to project images onto the 1/2.5” image sensor
`that is compatible with Parulski’s digital camera and indicate what weight
`should be given to that evidence and why. Because we agree with Patent
`Owner that the APA requires us to permit Patent Owner to submit such
`briefing if Petitioner is permitted to submit such briefing, both parties will be
`permitted to brief these issues. See 5 U.S.C. § 554(c)(1) (requiring an
`administrative adjudicatory body to “give all interested parties opportunity
`for . . . the submission and consideration of facts [and] arguments.”).
`
`3. Whether the Decision on Remand Must Consider Petitioner’s Reply
`Argument that a Skilled Artisan Would Have Known How to Modify
`Older Lens Designs to Manufacture Miniature Camera Lenses
`
`
`
`Petitioner argued that the Board erred when it declined to consider the
`arguments and evidence in its Reply that a person skilled in the art would
`have known how to modify the Ogata and Kawamura lenses for use as
`miniature camera lenses. See Paper 23 (“Pet. Reply”), 15–16. Petitioner
`argued that a recent Federal Circuit decision for a number of consolidated
`cases between the parties affirmed Board decisions that allowed and
`considered arguments first made in a petitioner’s reply because they were
`responsive to arguments first raised in a patent owner response. See
`
`
`
`7
`
`
`
`IPR2020-00906
`Patent 10,225,479
`
`Corephotonics, Ltd. v. Apple Inc., Case Nos. 2022-1340, 2022-1341, 2022-
`1455, and 2202– 1456, slip op. (Fed. Cir. 2023) (“Corephotonics II”).
`Petitioner, therefore, requested briefing on whether the Board’s decision on
`remand must consider the arguments and evidence first presented in
`Petitioner’s Reply regarding modifying the Ogata and Kawamura lenses.
`Patent Owner argues that the Federal Circuit decision cited by Petitioner did
`not change the law on proper and improper reply arguments and does not
`affect the correctness of the determination in our Decision that Petitioner’s
`Reply arguments were improper.
`We agree with Patent Owner and decline to grant briefing on whether
`our decision on remand must consider Petitioner’s Reply arguments that
`proposed modifying—as opposed to scaling—Ogata’s and Kawamura’s
`lenses. Our Decision did not err in determining that these arguments were
`improper reply arguments and the Federal Circuit did not instruct us to
`consider these arguments on remand.
`In the Petition, Petitioner contends that a person of ordinary skill in
`the art would have known that Kawamura’s lens could have been scaled to
`focus an image onto the image sensor in Parulski’s digital camera
`embodiment not that it could have been modified to focus an image on the
`image sensor in Parulski’s cell phone camera embodiment.6 See Paper 3
`(“Pet.”), 12–13 (citing Ex. 1001, 12:55–13:20, Figs. 2A/2B); id. at 19–20
`(scaling Kawamura’s lens to focus images onto the image sensor of the
`
`
`6 Parulski discloses both digital and cell phone camera embodiments.
`Compare Ex. 1005, 8:28–33, Figs. 1, 2A/B, with id. at 9:5–10, Figs. 15A/B,
`16A/B. Petitioner’s contentions in the Petition relate to Parulski’s digital
`camera embodiment, illustrated in Figures 2A/B. See Pet. 12–13.
`8
`
`
`
`
`
`IPR2020-00906
`Patent 10,225,479
`
`Kodak Easyshare V610 digital camera and identifying that camera as a
`“similar prior art camera”).7 Significantly, other than scaling Kawamura’s
`lens, Petitioner did not propose modifying it in any way, and provided no
`reason to modify it in any way other than scaling. Id. at 21–24. By contrast,
`in its Reply, Petitioner contends that “to the extent that miniature camera
`lenses would have been required for combining Kawamura and Ogata with
`Parulski, Dr. Sasian’s detailed analysis . . . shows how a POSITA could have
`used lens design software to modify and adjust an older lens design into a
`miniaturized version.” Paper 24 (“Pet. Reply”), 15–16 (emphasis added).
`The newly proposed modifications include replacing glass lens elements
`with plastic lens elements, adjusting their radii of curvature and thicknesses
`(as opposed to simply scaling them), moving the aperture stop location, and
`increasing the aperture stop diameter. Ex. 1039 ¶¶ 27–29.
`Admittedly, Petitioner’s Reply arguments are responsive to Patent
`Owner’s contention that a skilled artisan would not have scaled Kawamura’s
`lens but, instead, would have “look[ed] to designs that were purpose-made
`for miniature cameras.” Paper 15, (“PO Resp.”), 45. Nonetheless,
`Petitioner’s Reply arguments are new arguments that do not support
`Petitioner’s original scaling contentions and are, therefore, improper. See
`Corephotonics II at 24 (finding “the arguments and evidence in the reply
`must not be part of a new theory of unpatentability. . . . even if the new
`theory is responsive to the patent owner’s response.”). This is so, the
`Federal Circuit instructs, because “[i]t is of the utmost importance that
`
`
`7 Although our discussion relates to Petitioner’s arguments regarding
`modifying Kawamura’s lens, Petitioner made similar arguments regarding
`modifying Ogata’s lens. See Pet. 26–27.
`9
`
`
`
`
`
`IPR2020-00906
`Patent 10,225,479
`
`petitioners . . . adhere to the requirement that the initial petition identify
`‘with particularity’ the ‘evidence that supports the grounds for the challenge
`to each claim.’” Id. at 12 (quoting Intelligent Bio-Sys., Inc. v. Illumina
`Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016)). Although the
`Federal Circuit affirmed the Board’s consideration of new analogous art
`arguments in the consolidated cases cited by Petitioner, they did so because
`“[a] petitioner is not required to anticipate and raise analogous art arguments
`in its petition.” Id. at 27 (quoting Sanofi-Aventis Deutschland GmbH v.
`Mylan Pharms. Inc., 66 F.4th 1373, 1379 (Fed. Cir. 2023)). By contrast, a
`petitioner is required to identify with particularity and in its petition the
`evidence supporting the grounds on which it challenges each claim.
`Intelligent Bio-Sys., 821 F.3d at 1369.
`
`4. Whether the Board Must Rule on Petitioner’s Motion to Admit the
`Briefing Patent Owner Submitted in a Related Korean Proceeding
`
`Petitioner noted that prior to issuing our Decision, we failed to rule on
`Petitioner’s motion to admit Patent Owner’s briefing in a Korean proceeding
`on a related patent. Petitioner contends Patent Owner took inconsistent
`positions in that proceeding regarding the availability of telephoto lens
`designs for digital cameras. See Paper 50 (“Mot”), 1–2. Therefore,
`Petitioner requested the Board decide Petitioner’s pending motion to admit
`and consider this evidence. Because this motion has been fully briefed by
`the parties, we shall decide this motion before or concurrently with our
`decision on remand to the extent it is relevant to an issue that is addressed in
`the decision on remand. See Papers 50, 51.
`
`
`
`
`10
`
`
`
`IPR2020-00906
`Patent 10,225,479
`
`
`
`
`
`
`ORDER
`
`It is
`ORDERED that Petitioner and Patent may each submit a 17-page
`
`brief limited to addressing the following issues:
`(1) what constitutes an APA-compliant decision on remand,
`(2) whether the Board can consider the errors in the Sasian declaration
`identified above in its decision on remand, and
`(3) what evidence currently in the record supports Petitioner’s
`contentions that Ogata’s example 1 lens and Kawamura’s example 1 lens
`can be scaled to project images onto the 1/2.5” image sensor compatible
`with Parulski’s digital camera, what weight should be given to that evidence,
`and why;
`FURTHER ORDERED that no additional or supplemental evidence
`may be submitted with a party’s brief;
`FURTHER ORDERED that each party’s brief is due no later than
`January 15, 2024; and
`FURTHER ORDERED that no additional briefing is ordered at this
`time.
`
`
`
`
`
`
`11
`
`
`
`IPR2020-00906
`Patent 10,225,479
`
`For PETITIONER:
`Michael S. Parsons
`Andrew S. Ehmke
`Jordan Maucotel
`HAYNES AND BOONE, LLP
`michael.parsons.ipr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
`jordan.maucotel@haynesboone.com
`
`
`For PATENT OWNER:
`Neil A. Rubin
`C. Jay Chung
`RUSS AUGUST & KABAT
`nrubin@raklaw.com
`jchung@raklaw.com
`
`
`
`
`
`12
`
`
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