`Trials
`571-272-7822
`
`Paper No. 8
`Entered: December 4, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`
`Petitioner,
`
`V.
`
`COREPHOTONICS LTD.,
`
`Patent Owner.
`
`Case IPR2018-01140
`
`Patent 9,402,032 BZ
`
`Before MARC S. HOFF, BRYAN MOORE, AND MONICA
`ULLAGADDI, Administrative Patent Judges.
`
`HOFF, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes'Review
`
`37 C.F.R. § 42.108
`
`
`
`IPR2018-01140
`
`Patent 9,402,032 B2
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`1.
`
`INTRODUCTION
`
`Apple Inc. (“Petitioner”) requested an inter partes review of claims 1
`
`and 13—15 (the “Challenged Claims”) of US. Patent No. 9,402,032 B2 (Ex.
`
`1001, “the ’032 patent”). Paper 2 (“Petition” or “Pet.”).
`
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`
`unless it is determined that there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least one of the claims challenged in the
`
`petition. Based on the information presented in the Petition and Preliminary
`
`Response, we are persuaded that there is a reasonable likelihood Petitioner
`
`would prevail with respect to claims 1 and 13 on Petitioner’s assertion of
`
`anticipation by Ogino. We are also persuaded that there is a reasonable
`
`likelihood Petitioner would prevail with respect to claims 14 and 15 on
`
`Petitioner’s asserted combination of Ogino and Chen II.
`
`Accordingly, we institute an inter partes review of claims 1 and 13—
`
`15 on the grounds specified below.
`
`Our factual findings and conclusions at this stage of the proceeding
`
`are based on the evidentiary record developed thus far. This is not a final
`
`decision as to patentability of claims for which inter partes review is
`
`instituted.
`
`II.
`
`BACKGROUND
`
`A.
`
`The '032 Patent (Ex. 1001)
`
`The ’032 Patent concerns an optical lens assembly with five lens
`
`elements. Ex. 1001, Abstract. Ex. 1001, 7:31—33. The ’032 patent issued
`
`on July 26, 2016, based upon an application filed November 4, 2015,
`
`ultimately claiming priority to a provisional application filed July 4, 2013.
`
`Figure 1A of the ’032 Patent is reproduced below:
`
`
`
`IPR2018-01140
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`Patent 9,402,032 B2
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` $0"
`
`{emf
`“Jib
`
`no
`
`Hoot
`
`Hob '
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`Z
`we»
`
`FIG. [A
`
`Figure 1A of the ’032 Patent shows a first embodiment of its optical
`
`lens system. Ex. 1001, Figure 1A.
`
`In order from an object side to an image side, the lens assembly
`
`comprises a first lens element (102) with positive refractive power having a
`
`convex object side surface; a second lens element (104) with negative
`
`refractive power having a thickness d2 on an optical axis and separated from
`
`the first lens element by a first air gap; a third lens element (106) with
`
`negative refractive power and separated from the second lens element by a
`
`second air gap; a fourth lens element (108) having a positive refractive
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`power and separated from the third lens element by a third air gap; and a
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`fifth lens element (110) having a negative refractive power, separated from
`
`
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`IPR2018-01140
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`Patent 9,402,032 B2
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`the fourth lens element by a fourth air gap, the fifth lens element having a
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`thickness d5 on the optical axis. Id. at 1:44—54, 2:61—3:27.
`
`The lens system of the ’032 Patent has an effective focal length
`
`(EFL), and a total track length (TTL) on an optical axis between the object-
`
`side surface of the first lens element and the electronic sensor. Id. at 1:60—
`
`63. In all embodiments of the ’032 Patent, the TTL/EFL ratio is smaller
`
`than 1.0. Id. at 1:63—65.
`
`B.
`
`Challenged Claims
`
`Claim 1 is independent. Claims 13—15 depend from claim 1. Claim 1
`
`is reproduced below:
`
`1. A lens assembly, comprising: a plurality of refractive lens
`elements arranged along an optical axis, wherein at least one
`surface of at least one of the plurality of lens elements is
`aspheric, wherein the lens assembly has an effective focal
`length (EFL), and wherein the lens assembly has a total track
`length (TTL) of 6.5 millimeters or less and a ratio TTL/EFL
`of less than 1.0, wherein the plurality of lens elements
`comprises, in order from an object side to an image side, a first
`lens element with positive refractive power and a second lens
`element with negative refractive power, wherein a focal
`length f1 of the first lens element is smaller than TTL/2.
`
`Ex. 1001, 7:43—53.
`
`Proposed Grounds of Unpatentability and Evidence Relied
`
`C.
`Upon
`
`Petitioner advances the following challenges:
`
`1. Claims 1 and 13 as anticipated under 35 U.S.C. § 102(a)(2) by
`
`Ogino et al., US. Patent No. 9,128,267, issued Sep. 8, 2015 (“Ogino”) (Ex.
`
`1005);
`
`
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`IPR2018-01140
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`Patent 9,402,032 B2
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`2. Claims 14 and 15 as unpatentable under 35 U.S.C. § 103(a) over
`
`Ogino and Chen‘, US. Patent No. 8,233,224, issued July 31, 2012 (“Chen
`
`11”) (Ex. 1009).
`
`Petitioner supports its challenges with a declaration of Dr. Jose Sasian
`
`(Ex. 1003).
`
`Patent Owner has not filed a response to the Petition for Inter Partes
`
`Review.
`
`Related Proceedings
`
`The ’032 Patent is asserted in litigation by Patent Owner in
`
`Corephotonics, Ltd. v. Apple Inc, 5—17-cv-06457 (ND. Cal.). Pet. 2; Ex.
`
`2007.
`
`This proceeding is also related to IPR2018-01146, requested by
`
`‘
`
`Petitioner Apple Inc., seeking review of US. Patent No. 9,568,712. Both
`
`patents for which review is requested are continuations (in a chain of
`
`continuity) from PCT/IB2014/062465.
`
`III.
`
`ANALYSIS
`
`A.
`
`Overview ofAsserted Reference Ogino
`
`US. Patent No. 9,128,267 to Ogino issued on September 8, 2015,
`
`based upon an application filed March 26, 2014. Ogino qualifies as prior art
`
`under 35 U.S.C. § 102(a)(2) due to its claim of foreign priority based upon a
`
`Japanese application filed March 29, 2013.
`
`Ogino relates to an imaging lens substantially consisting of, in order
`
`from an object side, five lenses: a first lens (L1) that has a positive refractive
`
`power and has a meniscus shape which is convex toward the object side; a
`
`1 US. Patent No. 7,777,972 to Chen (“Chen 1”) is in the record as Ex. 1008.
`
`5
`
`
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`IPR2018-01140
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`Patent 9,402,032 B2
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`second lens (L2) that has a biconcave shape; a third lens (L3) that has a
`
`meniscus shape which is convex toward the object side; a fourth lens (L4)
`
`that has a meniscus shape which is convex toward an object side; and a fifth
`
`lens (L5) that has a negative refractive power and has at least one inflection
`
`point on an image side surface. See Ex. 1004, 224—13. Figure 6 of Ogino is
`
`reproduced below.
`
`FIG.6 W
`
`CG
`
`100(R14
`
`R10
`
`R11
`
`R13
`
`R12
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`Figure 6 is a lens cross-sectional View illustrating a configuration
`
`example of an imaging lens according to an embodiment of the invention.
`
`See Id. at 429—1 1.
`
`
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`IPR2018-01140
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`Patent 9,402,032 B2
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`B.
`
`Overview ofAsserted Reference Chen II
`
`US. Patent 8, 233,224 to Chen 11 issued on July 31, 2012, based upon
`
`an application filed January 8, 2010.
`
`Chen II concerns an imaging lens system including, in order from the
`
`object side to the image side: a first lens element (100) with positive
`
`refractive power having a convex object-side surface; a second lens element
`
`(110) with negative refractive power; a third lens element (120) having a
`
`concave image-side surface; a fourth lens element (130) with positive
`
`refractive power; a fifth lens element (140) with negative refractive power
`
`having a concave image-side surface, at least one surface thereof being
`
`provided with at least one inflection point. Ex. 1009, 1:36—43.
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`IPR2018-01140
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`Patent 9,402,032 B2
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`Figure 1 of Chen II is reproduced below:
`
`uléi‘y/ ’
`
`102 121 I
`111122
`112 131
`
`132
`141
`
`101
`
`Figure 1 of Chen II shows an imaging lens system in accordance with
`
`a first embodiment of the invention. Ex. 1009, 2:44—45.
`
`C.
`
`Claim Construction
`
`Claims of an unexpired patent that will not expire before issuance of a
`
`final written decision are interpreted using the broadest reasonable
`
`interpretation in light of the specification. See 37 C.F.R. § 42.100(b) (2016);
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144—46 (2016).
`
`Although the ’032 patent’s expiration date is not mentioned by either party,
`
`we note that the ’032 patent issued from an application filed November 4,
`2015, and is a continuation of a chain of applications, the oldest of which
`
`8
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`IPR2018-01140
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`Patent 9,402,032 B2
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`was filed July 4, 2013. Ex. 1001, Cover. Accordingly, the ’032 patent is not
`
`scheduled to expire before the expected issuance of a final written decision
`
`in this review. See 35 U.S.C. § 154(a)(2). Thus, we apply the broadest
`
`reasonable construction standard. See id.
`
`Under the broadest reasonable construction standard, claim terms
`
`generally are given their ordinary and customary meaning, as would be
`
`understood by one of ordinary skill in the art in the context of the entire
`
`disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007). The claims, however, “‘should always be read in light of the
`’9)
`specification and teachings in the underlying patent,
`and “[e]ven under the
`
`broadest reasonable interpretation, the Board’s construction ‘cannot be
`
`divorced from the specification and the record evidence. ’” Microsoft Corp.
`
`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (citations omitted).
`
`Further, any special definition for a claim term must be set forth in the
`
`specification with reasonable clarity, deliberateness, and precision. See In re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
`
`definition, limitations are not to be read from the specification into the
`
`claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`We construe claim terms to the extent necessary for our analysis on
`
`whether to institute a trial. Vivid Techs., Inc. v. Am. Sci. & Eng ’g, Inc., 200
`
`F.3d 795, 803 (Fed. Cir. 1999) (explaining that only claim terms in
`
`controversy need to be construed, and only to the extent necessary to resolve
`
`the controversy). Consequently, we address below Petitioner’s proposed
`
`construction of the terms “effective focal length” and “total track length” in
`
`the context of claims 1 and 13—15.
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`IPR2018-0114O
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`Patent 9,402,032 B2
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`Efi’ective Focal Length (EFL)
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`Petitioner asserts that while the specification of the ‘032 patent does
`
`not offer an express definition for the term “effective focal length,” “its
`
`meaning is well known in the art, as exemplified in Li (Ex. 1007), which
`
`states that “[t]he focal length of a lens assembly [is] also referred to as the
`
`effective focal length [(]EFL).” Pet. 9—10 (internal parentheses omitted);
`
`Ex. 1007, 2:59—61.
`
`Having reviewed the evidence of record at this stage of this
`
`proceeding, we agree with Petitioner that Li supports construing the term
`
`“effective focal length” as “the focal length of a lens assembly.” For
`
`purposes of this Decision, we construe the term “effective focal length” in
`
`this manner. However, we further direct the parties to address fully the
`
`meaning of this term at trial, particularly as to whether the construction
`
`applied in this Decision is the broadest reasonable construction. In so doing,
`
`the parties should indicate all evidence in support of their positions,
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`including citations to any relevant portions of the prosecution history.
`
`Total Track Length (TTL)
`
`Patent Owner’s expert, Dr. Sasian, states that the specification of the
`
`’032 patent discloses that TTL is the “total track length on an optical axis
`
`between the object-side surface of the first lens element and the electronic
`
`sensor.” Ex. 1003 11 39; Ex. 1001, 1:61—63. The electronic sensor or image
`
`sensor “is disposed at the image plane 114 for the image formation.” Ex.
`
`1003 11 39; Ex.1001, 3:13—15. This is consistent with other examples in the
`
`art. For instance, Chen I (Ex. 1008) states that “TTL is defined as the on-
`
`axis spacing between the object-side surface of the first lens element and the
`
`10
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`IPR2018-01140
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`Patent 9,402,032 B2
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`image plane when the first lens element is positioned closest to the imaged
`
`object.” Ex. 1003 fl 39; Ex. 1008, 3:24—26.
`
`In the specification of the ’032 Patent, the TTL of each lens system
`
`embodiment can be determined by summing the widths of lens elements and
`
`spacing between lens elements of the lens system from the object side of the
`
`first lens to the image plane. Ex. 1003 1] 40; see, e. g., Ex. 1001, Table 1,
`
`Table 3, Table 5.
`
`Accordingly, we agree with Petitioner that a person having ordinary
`
`skill in the art would conclude the term “total track length (TTL)” to be “the
`
`length of the optical axis spacing between the object-side surface of the first
`
`lens element and the image plane.”
`
`D.
`
`Legal Standardfor Anticipation
`
`“A rejection for anticipation under section 102 requires that each and
`
`every limitation of the claimed invention be disclosed in a single prior art
`
`reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)
`
`(quoting In re Paulsen, 30 F.3d 1475, 1478—79 (Fed. Cir. 1994)).
`
`E.
`
`Legal Standardfor Obviousness
`
`A claim is unpatentable under § 103(a) if the differences between the
`
`claimed subject matter and the prior art are such that the subject matter, as a
`
`whole, would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which said subject matter pertains.
`
`KSR Int '1 Co. v. Teleflex Inc., 550 US. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`
`including (1) the scope and content of the prior art; (2) any differences
`
`between the claimed subject matter and the prior art; (3) the level of skill in
`
`the art; and (4) when in evidence, objective indicia of non-obviousness
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`11
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`IPR2018-01140
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`Patent 9,402,032 B2
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`(i.e., secondary considerations). Graham v. John Deere Co., 383 US. 1, 17—
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`18 (1966). “To satisfy its burden of proving obviousness, a petitioner cannot
`
`employ mere conclusory statements. The petitioner must instead articulate
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`specific reasoning, based on evidence of record, to support the legal
`
`conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
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`1364, 1380 (Fed. Cir. 2016). Furthermore, in assessing the prior art, the
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`Board must consider whether a person of ordinary skill would have been
`
`motivated to combine the prior art to achieve the claimed invention. In re
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`Nuvasive, 842 F.3d 1376, 1381 (Fed. Cir. 2016).
`
`F.
`
`Anticipation ofclaims I and 13 by Ogino.
`
`Petitioner contends that claims 1 and 13 are anticipated under
`
`35 U.S.C. § 102(a)(2) by Ogino. Pet. 16—34.
`
`Relying on Dr. Sasian, Petitioner argues that Ogino discloses all of the
`
`limitations of challenged claims 1 and 13. Id.; Ex. 1005 1111 42—48.
`
`“A Lens Assembly ”
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`Ogino discloses a fixed-focus imaging lens that forms an optical
`
`image of a subject on an image device. Pet. 16; Ex. 1005, 1:7—8.
`
`“A Plurality ofrefractive lens elements arranged along an optical axis ”
`
`As shown in Figure 6, reproduced supra, Ogino includes lenses L1 to L5
`
`arranged along optical axis Z1. First lens L1 is disclosed as having positive
`
`refractive power. Pet. 18; Ex. 1005, 9:11. Second lens L2 is characterized
`
`as having “refractive power.” Pet. 18; Ex. 1005, 9:32. Third lens L3 is
`
`disclosed to have “negative refractive power in the vicinity of the optical
`
`axis.” Pet. 18; Ex. 1005, 7:60—62. Fourth lens L4 is disclosed to have
`
`“positive refractive power.” Pet. 18; Ex. 1005, 7:67. Fifth lens L5 is
`
`disclosed to have “negative refractive power.” Pet. 18; Ex. 1005, 8:8.
`
`12
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`IPR2018-01140
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`Patent 9,402,032 B2
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`”Wherein at least one surface of at least one of the plurality of lens elements
`
`is aspheric ”
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`Ogino discloses that “in the imaging lenses according to Examples 1
`
`to 6, both surfaces of each of the first to fifth lenses L1 to L5 are aspheric.”
`
`Pet. 18; Ex. 1005, 15:22—24.
`
`_ “Wherein the lens assembly has an eflective focal length (EFL) ”
`
`Ogino discloses that “[t]he focal length of a lens assembly (also
`
`referred to as the effective focal length, EFL) is the distance from the
`
`principal point to the focal point.” Ex. 1007, 2:59—61.
`
`“Wherein the lens assembly has a total track length (TTL) of 6.5 millimeters
`
`or less”
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`As construed supra, a person having ordinary skill in the art would
`
`understand total track length (TTL) to be the on-axis Spacing between the
`
`object-side surface of the first lens element and the image plane. See Ex.
`
`‘ 1008, 3:24—26. As shown in Ogino Fig. 6, reproduced supra, the person
`
`having ordinary skill in the art would identify the total track length of
`
`Ogino’s system to be the distance between the obj ect-side surface of first
`
`lens L1 and image plane 100. Ex. 1003 1] 48; Ex. 1005, Fig. 6. Ogino
`
`explicitly discloses that optical member CG of Fig. 6 may be omitted “by
`
`applying a coating to the fifth lens L5 or the like,” in order to “reduce the
`
`number of components, and to reduce the total length.” Ex. 1005, 5:65—6:2;
`
`See Ex. 1003 1] 48. Omitting optical member CG in this way, the total track
`
`length can be calculated by summing the widths of D2 to D10 and the air-
`
`converted value of back focal length Bf, as provided in Ogino Table 11,
`
`reproduced below:
`
`13
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`IPR2018-01140
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`Patent 9,402,032 B2
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`f= 4.428, Bf= 1.424, TL = 4.387
`
`
`EXAMPLE 6
`
`Vdj
`ndj
`Di
`Ri
`Si
`___—.—.__————-———-—
`
`1
`
`00
`
`—0.278
`
`(APERTURE
`
`STOP)
`
`“'2
`
`'3
`
`‘4
`
`‘5
`
`*6
`
`”7
`
`"8
`
`*9
`
`*10
`
`I‘11
`
`12
`
`13
`
`14
`
`1.17174
`
`101.21828
`
`0.557
`
`0.101
`
`1.54488
`
`54.87
`
`—8.52605
`
`0.334
`
`1.63351
`
`23.63
`
`3.10246
`
`253.12530
`
`7.08468
`
`—4.62732
`
`-2.28837
`
`2.81503
`
`1.45940
`
`00
`
`00
`
`00
`
`0.243
`
`0.354
`
`0.350
`
`0.427
`
`0.246
`
`0.351
`
`0.500
`
`0.300
`
`0.726
`
`1.54488
`
`54.87
`
`1.63351
`
`23.63
`
`1.63351
`
`23.63
`
`1.51633
`
`64.14
`
`W O
`
`gino discloses that “Tables 3 to 12 show specific lens data as
`
`Examples 2 to 6, corresponding to the configuration of the imaging lenses
`
`shown in FIGS. 2 to 6.” Ex. 1005, 15:20—22. From the values given in
`
`Table 11, the sum of widths D2 through D10 is 2.963 mm, and Table 11 lists
`
`the back focal length Bf as 1.424 mm. Thus, the total track length (TTL) =
`
`2.963 mm + 1.424 mm = 4.387 mm. Ex. 1003 TI 48. Ogino thus teaches a
`
`total track length of 6.5 mm or less, as required by claim 1.
`
`l4
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`IPR2018~01140
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`Patent 9,402,032 B2
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`“a ratio TTL/EFL ofless than 1.0”
`
`Ogino discloses that the EFL of Example 6 lens assembly is 4.428
`
`mm. Ex. 1005, 22:10—36. The TTL, as discussed supra, is 4.387 mm.
`
`Accordingly, the ratio TTL/EFL is 4.387/4.428, or 0.991, which is less than
`
`1.0. Ex. 1003 11 48.
`
`“Wherein the plurality of lens elements comprises, in orderfrom an object
`
`side to an image side, a first lens element with positive refractive power ”
`
`First lens L1 of Ogino is disclosed to have “positive refractive
`
`power.” Ex. 1003 1148; Ex. 1005, 13:9.
`
`“a second lens element with negative refractive power”
`
`We agree with Petitioner’s argument that the person of ordinary skill
`
`in the art would recognize that the refractive power of a lens is equal to the
`
`inverse of the lens’s focal length. Pet. 27. The refractive power of lens L2,
`
`where f2 is its focal length, is 1/f2. Ex. 1003 11 48. Table 13 of Ogino,
`
`reproduced below, gives the value of several conditional expressions,
`
`
`
`
`
`
`
`
`
`including f/f2.
`TABLE 13
`
`VALUES 1V COVD IO \1. F.
`'PRESSIONS
`
`{PRESSION CONDITIONAL
`
`
`EXAMPLE4 EXAMPLE 5EXAMPLE)EXAMPLE 2EXAMPLE 1EXPRESSIONSNUMBER EXAMPLEG
`(1)
`{In
`1.8
`1.7
`1.68
`2.49
`2.88
`2.04
`(2)
`m2
`-122
`-o.9s
`—1.1
`4.33
`—1.88
`—1.25
`(31
`rm 2
`0.91
`0.91;
`0.04
`1.17
`1.52
`1.14
`(4)
`{/1345
`-02
`-037
`-0.0s
`—0.42
`-104
`—o.4s
`(5)
`am
`0.15
`0.05
`0.2
`-0.03
`-o.3
`-0.16
`(6)
`(R3! — RBI)!
`—0. 18
`-0.03
`—0.48
`0.73
`0.98
`0.95
`(113“ 11.11)
`-0.33
`4.43
`-1.51
`-1.88
`—1.1
`—055
`ms
`(7)
`1.64
`1.44
`1.66
`1.5
`0.86
`1.7
`fo "mm/RS!
`(8)
`—0.31
`—0.86
`—0.06
`0.34
`0.09
`0.27
`1713
`(9)
`
`
`
`
`
`
`
`mu 0. 12 0.12 0.14 0.1 1 0.01;(10) 0.08
`
`
`
`The value of f/t2 in Example 6 is -1.25. Pet. 28; Ex. 1005, Table 13.
`
`The value of l/f2 can be obtained by multiplying f/f2 by l/f. The focal
`
`length f(also EFL) is 4.428 mm. (-1.25) * (l/4.428) = -0.282 for the value of
`
`l/f2. Pet. 29.
`
`15
`
`
`
`IPR2018-0114O
`
`Patent 9,402,032 B2
`
`Thus, the refractive power of Ogino’s second lens L2 is -0.282, and
`
`second lens L2 has negative refractive power, as required by claim 1.
`
`“Wherez'n a focal length f] of thefirst lens element is smaller than TTL/ ”
`
`Table 13 of Ogino, reproduced supra, gives a value of 2.04 for f/f1.
`
`Multiplying this value by l/f results in a value for NH. Thus, focal length fl
`
`is the reciprocal of that value. From Table 11 reproduced supra, f = 4.428
`
`mm. Therefore, 1/f= 1/4.428 = 0.226. 2.04 * 0.226 = 0.461. 1/O.461 =
`
`2.171 mm for focal length f1 of first lens element L1. Ex. 1003 1] 48. As
`
`discussed supra, TTL = 4.387 mm. TTL/2 = 2.194. The focal length f1 of
`
`first lens element L1 is thus less than TTL2, as claim 1 requires. Ex. 1003 1]
`
`48.
`
`CLAIM 13
`
`“the lens assembly of claim 1, wherein thefirst lens element has an Abbe
`
`number greater than 50 and the second lens element has an Abbe number
`
`smaller than 30 ”
`
`Ogino discloses that “[t.]he column of vdj shows values of the Abbe
`
`number of the j-th optical element from the object side for the d-line.” Ex.
`
`1005, 14:45—47. Table 11, reproduced supra, gives an Abbe number (vdj)
`
`of 54.87 for first lens L1 and an Abbe number of 23.63 for second lens L2.
`
`Therefore, Ogino teaches that the first lens element (L1) has an Abbe
`
`number greater than 50 and that the second lens element (L2) has an Abbe
`
`number smaller than 30, as claim 13 requires.
`
`16
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`
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`IPR2018-01140
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`Patent 9,402,032 B2
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`Conclusion
`
`Petitioner has established a reasonable likelihood of success in
`challenging claims 1 and 13 as anticipated by Ogino, for the reasons set
`
`forth above.
`
`We have reviewed the information provided by Petitioner, including
`
`the relevant portions of the supporting Sasian Declaration. Petitioner has
`
`identified relevant disclosures in Ogino, and has adduced evidence in
`
`support of its challenge, including the Sasian Declaration. Pet. 11—46 (citing
`
`Ex. 1003 W 43—48). We credit Petitioner’s evidence, including the
`
`testimony Of Dr. Sasian. Based on the record at this stage of the proceeding,
`
`therefore, we are persuaded that Petitioner has demonstrated a reasonable
`
`likelihood of prevailing with respect to this challenge to claims 1 and 13.
`
`Asserted Obviousness of Claims 14 and 15 over Ogino and
`G.
`Chen II
`
`Petitioner contends that claims 14 and 15 are unpatentable under 35
`
`U.S.C. § 103(a) as obvious over Ogino and Chen 11. Pet. 34—62.
`
`Petitioner’s analysis, as supported by the Sasian Declaration,
`
`demonstrates where Petitioner contends each element of claims 14 and 15 is
`
`disclosed in Ogino and Chen 11. Pet. 34—62 (citing Ex. 1003 1111 49—65).
`
`CLAIM 14
`
`”The lens assembly of claim 13, wherein the first lens element has a convex
`
`object-side surface and a convex or concave image-side surface ”
`
`Petitioner asserts, and we agree, that Ogino discloses first lens L1
`
`with a convex object-side surface and a concave image—side surface. Pet. 48.
`
`Ogino describes first lens L1 as having “a meniscus shape which is convex
`
`toward the object side.” Ex. 1005, 7:33—35. Dr. Sasian testifies that a
`
`17
`
`
`
`IPR2018-01140
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`Patent 9,402,032 B2
`
`person having ordinary skill in the art would recognize that this description
`
`means that L1 has a convex object-side surface and a concave image-side
`
`surface, because meniscus lenses are known to include one convex side and
`
`one concave side. Ex. 1003 1] 65. Table 11 of Ogino, reproduced supra,
`
`discloses radii of curvature (Ri) for lens L1. The object side surface of lens
`
`L1 has a positive Ri of 1.17174, indicating a convex surface. The second
`
`surface of lens L1 has a positive R1 of 10121828. Such a positive value
`
`would be understood to correlate to a concave image-side surface. Ex. 1003
`
`1] 65.
`
`“wherein the second lens element is a meniscus lens having a convex object-
`
`side surface ”
`
`‘
`
`Ogino discloses that second lens L2 has a biconcave shape. Ex. 1005,
`
`13:5—11. Chen II discloses a lens assembly including a second lens having a
`
`convex object—side surface.
`
`18
`
`
`
`IPR2018-01140
`
`Patent 9,402,032 B2
`
`Figure l of Chen II is reproduced below:
`
`‘
`
`I
`
`101
`
`1\
`
`$419; A‘ /
`102
`121 l
`111 122
`112 131
`
`132
`141
`
`"
`
`,
`
`14
`
`Figure 1 of Chen II shows an imaging lens system in accordance with
`
`a first embodiment of the invention. Ex. 1009, 2:44—45.
`
`As shown in Figure 1, second lens 110 of Chen constitutes a meniscus
`
`lens with a convex object-side surface. Ex. 1003 11 65; Ex. 1009, Figure 1.
`
`Petitioner argues, and we agree, that “the lens system in Chen 11 allows rays
`
`to pass through the outer edges of the second lens in order to reach the image
`
`plane. This results in no vignetting, which is the blocking of rays on or near
`
`the outer edges of a lens system.” Pet. 35—3 6. A lack of vignetting “would
`
`result in higher relative illumination than when vignetting is employed at the
`
`19
`
`
`
`IPR2018-01140
`
`Patent 9,402,032 B2
`
`second lens.” Pet. 36; Ex. 1003 1] 51. Petitioner argues, and we agree, that
`
`simulation with known lens design software (Zemax) indicates that
`
`replacement of Ogino’s second lens with Chen H’s second lens would result
`
`in relative illumination over 50%, which is known to be desirable. Pet. 44—
`
`45; Ex. 1003 11 58.
`
`The person having ordinary skill in the art would also have been
`
`“aware of common values for relative illumination, ray aberration, and the
`
`chief ray angle (CRA) at the sensor in modern mobile phone applications.”
`
`Pet. 36; Ex. 1012, 3.
`
`We are persuaded that the person having ordinary skill in the art
`
`would have been motivated to modify Ogino to include a second lens
`
`element constituting a meniscus lens having a convex object—side surface, in
`
`order to increase the number of light rays that make it through the lens
`
`assembly to the image plane, and to mitigate ray aberration. Ex. 1003 1] 65.
`
`Ogino also teaches that it is advantageous to reduce “deterioration in the
`light receiving efficiency and occurrence of color mixture due to increase of
`
`incident angle” on order “to achieve optimum optical performance.” Ex.
`
`1005, 7:21—25. The person having ordinary skill in the art would have been
`
`further motivated to modify Ogino in view of Chen H’s teachings
`
`concerning its second lens element, in order to reduce aberration and reduce
`
`the CRA. Pet. 37; Ex. 1003 fl 53.
`
`20
`
`
`
`IPR2018-01140
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`Patent 9,402,032 B2
`
`”the lens assembly of claim 14, wherein a lens assembly F# is smaller than
`
`CLAIM 15
`
`Figure 13 of Ogino is reproduced below:
`
`2.9 ”
`
`FIG.13
`
`EXAMPLE 6
`
`Fm = 2.64
`
`a): 29.8‘
`
`no: 298‘
`
`
`
`— l-UNI
`—-- C-UNE
`Milli
`...-_ rum
`
`-. — MIN! (51
`....... MIN! (1)
`
`— G-IJNE
`
`‘
`l
`l
`100nm 40%
`lOOum ~100um 0
`-100um 0
`SPHERIEM. WRIT!“
`ASHBMRTISM
`A
`B
`
`0
`msrmmnu
`C
`
`Ioum
`0
`10% '10ufi'l
`LAWN. CHROME!“ ABERHRTIDN
`
`D F
`
`igure 13 is an aberration diagram illustrating various aberrations of
`
`an imaging device according to Example 6 of the invention of Ogino. Ex.
`
`1005, 2245—47. As argued by Petitioner, Figure 13 discloses that the F
`
`number (“Fno”) of the lens system of Example 6, illustrated in Figure 6, is
`
`2.64. See Pet. 61. Because this F number is less than 2.9, we agree with
`
`Petitioner that the combined teachings of Ogino and Chen II disclose the
`
`limitation of dependent claim 15.
`
`I
`
`Conclusion
`
`Petitioner has established a reasonable likelihood of success in
`
`challenging claims 14 and 15 as unpatentable over Ogino and Chen II for the
`reasons set forth above.
`
`We have reviewed the information provided by Petitioner, including
`
`the relevant portions of the supporting Sasian Declaration. Petitioner has
`
`identified relevant disclosures in Ogino and Chen II, and has adduced
`
`21
`
`
`
`IPR2018-0114O
`
`Patent 9,402,032 B2
`
`evidence in support of its challenge, including the Sasian Declaration. Pet.
`
`34—62 (citing Ex. 1003 1111 49—65). We credit Petitioner’s evidence,
`
`including the testimony of Dr. Sasian. Based on the record at this stage of
`
`the proceeding, therefore, we are persuaded that Petitioner has demonstrated
`
`a reasonable likelihood of prevailing with respect to this challenge to claims
`
`14 and 15.
`
`IV.
`
`SUMMARY
`
`We determine that Petitioner has demonstrated a reasonable likelihood
`
`of prevailing on its challenge to claims 1 and 13 over Ogino, and its
`
`challenge to claims 14 and 15 over the combination of Ogino and Chen 11.
`
`At this preliminary stage, we have not made a final determination as
`
`to the patentability of claims 1 and 13—15, or any underlying factual and
`
`legal issues.
`
`V.
`
`ORDER
`
`It is, therefore,
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review of the ’032 patent is hereby instituted on the ground of anticipation of
`
`claims 1 and 13 over Ogino;
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), an inter
`
`partes review of the ’032 patent is hereby instituted on the ground of
`
`obviousness of claims 14 and 15 over Ogino and Chen H; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 CPR. § 42.4, notice is hereby given of the institution of a trial
`
`commencing on the entry date of this Decision.
`
`22
`
`
`
`IPR2018-01140
`
`Patent 9,402,032 B2
`
`PETITIONER:
`
`Michael Parsons
`
`michaelparsons.ipr@haynesboone.com
`
`Andrew Ehmke
`
`andyehmke.ipr@haynesboone.com
`
`Jordan Maucotel
`
`jordan.maucotel@haygesboone.com
`
`PATENT OWNER:
`
`Neil Rubin
`
`nrubin@raklaw.com
`
`C. Jay Chung
`j chung@raklaw.com
`
`Reza Mirzaie
`
`rmirzaie@raklaw.com
`
`23
`
`
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