Trials@uspto.gov
`571-272-7822
`
`Paper 8
`Entered: December 8, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`V.
`
`COREPHOTONICSLTD.,
`Patent Owner.
`
`IPR2020-00897
`Patent 10,324,277 B2
`
`Before BRYAN F. MOORE, GREGG I. ANDERSON,and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`ANDERSON,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Jnter Partes Review
`35 U.S.C. § 314,37 CFR. $ 42.4
`
`
`571-272-7822
`
`Paper 8
`Entered: December 8, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`V.
`
`COREPHOTONICSLTD.,
`Patent Owner.
`
`IPR2020-00897
`Patent 10,324,277 B2
`
`Before BRYAN F. MOORE, GREGG I. ANDERSON,and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`ANDERSON,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Jnter Partes Review
`35 U.S.C. § 314,37 CFR. $ 42.4
`
`
`
`IPR2020-00897
`Patent 10,324,277 B2
`
`I.
`
`INTRODUCTION
`
`Apple, Inc. (‘Petitioner’) filed a Petition requesting inter partes
`
`review of claims 1—24 of U.S. Patent No. 10,324,277 (Ex. 1001, “the ’277
`
`patent”). Paper 2 (“Pet.’). Corephotonics, Ltd. (“Patent Owner”) did not
`
`file a Preliminary Response.
`
`Wehavejurisdiction under 35 U.S.C. § 314. Upon considering the
`
`record developed thusfar, for reasons discussed below,weinstitute inter
`
`partes review.
`
`Il. BACKGROUND
`
`A. Real Parties in Interest
`
`The real parties in interest are Apple Inc. and Corephotonics, Ltd.
`
`Pet. 1; Paper6, 1.
`
`B. Related Matters
`
`Petitioner advises us that the ’277 patent is the subject one pending
`
`civil action, Corephotonics, Ltd. v. Apple Inc., Case No. 5-18-cv-02555
`
`(N.D. Cal.) 2555 case). Pet. 2. Patent Owner advises us of a separate civil
`
`action involving the same parties, Corephotonics, Ltd. v. Apple Inc., Case
`No. 3:19-cv-04809 (N.D. Cal.) (°4809 case). Paper 6, 1. The ’2555 and
`
`4809 cases were foundrelated to a previously filed case in the Northern
`
`District of California between the same parties, Case No. 17-cv-06457
`
`(N.D.Cal.). See ’2555 case, Dkt. 14; °4809 case, Dkt. 16.
`
`Petitioner further advises us of two inter partes review proceedings
`
`between these sameparties, IPR2018-01140 (“1140 IPR”) and IPR2018-
`
`
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`IPR2020-00897
`Patent 10,324,277 B2
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`01146 (1146 IPR), which challenge respectively certain claims of U.S. Pat.
`Nos. 9,568,712 (°712 patent) and 9,402,032 (’032 patent).' Pet. 8, fn.2.
`
`Weidentify the following related administrative matters, including
`
`every application and patent claiming the benefit of the priority ofthe filing
`
`date of patents in the priority chain of the ’277 patent. See Office
`
`Consolidated Trial Practice Guide? at 18; see also 84 Fed. Reg. 64,280 (Nov.
`
`21, 2019).
`
`U.S. Patent No. 10,317,647 (“the 647 patent”), along with U.S.
`
`Patent No. 10,330,897, (“the ’897 patent’) claims priority to:
`
`Application No. 15/817,235 (now the ’277 patent), which claims
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`priority to
`
`Application No. 15/418,925 (now U.S. Patent No. 9,857,568,“the
`
`°568 patent”), which claimspriority to
`
`Application No. 15/170,472 (now U.S. Patent No. 9,568,712,“the
`
`712 patent”), which claimspriority to
`
`Application No. 14/932,319 (now U.S. Patent No. 9,402,032,“the
`
`°032 patent”), which claimspriority to
`
`Application No. 14/367,924 (abandoned), which claimspriority to
`
`PCT/IB2014/062465, which claimspriority to Prov. No. 61/842,987.
`
`With respect to AIA trial proceedings, we note the following:
`
`IPR2020-00896 (challenges the 647 patent);
`
`IPR2020-00878 (challenges the ’878 patent);
`
`' The ’1140 and ’1146 IPRs have both terminated in final written decisions
`relating to certain claims of the challenged patents. °1140 IPR, Paper 37
`(claims 1, 13, 14, and 15 shown unpatentable); ?1146 IPR, Paper 37 (claims
`15-17 shown unpatentable). Patent Ownerhas appealed both decisions to
`the Federal Circuit. °1140 IPR, Paper 38; 71146 IPR, Paper38.
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated
`
`3
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`
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`IPR2020-00897
`Patent 10,324,277 B2
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`IPR2019-00030 (challenged the ’568 patent); along with
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`IPR2018-01 146 (challenged ’712 patent); and
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`IPR2018-01140 (challenged the °032 patent), as identified by
`
`Petitioner.
`
`C. The Technology and ’277 Patent
`
`The application for the ’277 patent was filed November 19, 2017. Ex.
`
`1001 at [22]. A provisional application No. 61/842,987 was filed July 4,
`
`2013.° Id. at [60].
`
`1. Technology
`
`The ’277 patent describes and claims an optical lens system used in a
`
`portable electronic product such as a cell phone. Ex. 1001, 1:24-29. A long
`
`effective focal length (EFL) relative to a short total track length (TTL)of the
`
`lens assembly enables good quality images. /d. at 1:31-45. The latest lens
`
`designs use five lenses but the TTL/EFLratio is larger than desired. Jd. at
`
`1:41-45.
`
`2.
`
`’277 Patent
`
`Figure 1A of the ’277 patent is reproduced below.
`
`3 Becausethe effective filing date of this patent is March 16, 2013, orlater,
`post-AIA § 103 applies to this proceeding.
`
`4
`
`
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`IPR2020-00897
`Patent 10,324,277 B2
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`
`
`FIG. 1A
`
`Fig. 1A illustrates a first embodimentof the optical lens system.
`
`Ex. 1001, 2:59-60. Referring to Figure 1A, optical lens system 100 includes
`
`five lenses 102, 104,106, 108, and 110 arrangedin order along optical axis z
`
`from the object side of the system (at the depicted x axis) to the image side
`
`(image plane 114). Jd. at 3:25—46, 4:19 (discussing optical axis z). Each
`
`lensis of a specific refractive power and shape. Jd. at 3:19-44. An “image
`
`sensor (not shown)is disposed at image plane 114 for the image formation.”
`
`Id. at 3:44-46.
`
`Eachofthe five lenses of this embodiment haverefractive powers and
`
`shapes shown in Figure 1A and further specified as follows:
`
`first lens 102 has a positive refractive power and a convex object-
`side surface and a concave image side surface (Ex. 1001, 3:26—
`28);
`
`second lens 104 has a negative refractive power of and a
`meniscus convex object-side surface U/d. at 3:28—31);
`
`third lens 106 has a negative refractive power a concaveobject-
`side surface and a concave image-side surface (/d. at 3:3 1-33);
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`IPR2020-00897
`Patent 10,324,277 B2
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`fourth lens 108 has a positive refractive power and a positive
`meniscus with a concave object-side (/d. at 3:34—38); and
`
`fifth lens 110 has a negative refractive power having a negative
`meniscus, with a concave object-side surface (/d. at 3:38-41).
`
`D. Illustrative Claim
`
`All claims of the ’277 patent, 1 through 24, are challenged. Pet. 9.
`
`Claims 1, 11, and 18 are independent apparatus claims,“a lens assembly.”
`
`Ex. 1001, 8:21-10:46. The remaining claims 2—10, 12-17, and 19-24all
`
`dependdirectly or indirectly from one of the independent claims. Claim 1 is
`
`reproduced belowas illustrative.
`
`[1.0]* A lens assembly, comprising:
`
`[1.1] a plurality of refractive lens elements arranged along an
`optical axis, wherein at least one surface of at Icast one of the
`plurality of lens elements is aspheric,
`
`[1.2] wherein the lens assembly has an effective focal length
`(EFL),
`
`[1.3] wherein a lens system that includes the lens assembly plus
`a window positioned between the plurality of lens elements and
`an image plane has a total track length (TTL) of 6.5 millimeters
`or less,
`
`[1.4] wherein a ratio TTL/EFLis less than 1.0,
`
`[1.5] wherein the plurality of lens elements comprises, in order
`from an object side to an imageside, a first lens element with
`positive refractive power,
`
`[1.6] asecondlens element with negative refractive power,
`
`* Brackets for each claim limitation are used by Petitioner and adopted for
`purposesofthis Decision.
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`[1.7] and a third lens element,
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`[1.8] wherein a focal length fl ofthe first lens elementis smaller
`than TTL/2 and
`
`[1.9] wherein a lens assembly F # is smaller than 2.9.
`
`Ex. 1001, 8:22-36.
`
`E. Evidence
`
`This proceeding relies on the following prior art references and
`
`expert testimony:
`Ogino (Ex. 1005)’; Oginoet al., US 9,128,267 B2,filed Mar. 29,
`
`2013, issued Sept. 8, 2015;
`Bareau (Ex. 1012)°: Bareauet al., “The Optics ofMiniature Digital
`Camera Modules,” SPIE Proceedings Volume 6342, International Optical
`
`Design Conference 2006; 63421F (2006), available at
`
`https://doi.org/10.1117/12.692291.
`
`Petitioner also relies on the Declaration of José Sasian, PhD
`
`under 37 C.F.R. § 1.68 (“Sasian Declaration,” Ex. 1003).
`
`F. Prior Art and Asserted Grounds
`
`Petitioner asserts that claims 1-24 would have been unpatentable on
`
`the following grounds(Pet. 9):
`
`> Petitioner alleges Ogino “wasfiled on March 26, 2014 andclaimspriority
`to Japanese Application No. 2013-072282 filed on March 29, 2013.” Pet. 9.
`Thus, Petitioner alleges Oginois prior art under 35 U.S.C. §102(a)(2) as of
`its Japanese filing date. Jd. On this record, we find that Oginoispriorart.
`® Petitioner alleges Bareau “was both presented publicly and published in
`2006 [Ex. 1003 § 50] andis prior art under §102(a)(1).” Pet. 9. On this
`record, we find that Bareauis priorart.
`
`7
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`
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`Claim(s) Challenged|35 U.S.C. § _ Reference(s)/Basis
`
`
`
`1-3, 5-8
`Ogino Example 4,’ Bareau
`
`
`Ogino Example 5, Bareau
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`I. ANALYSIS
`
`A. Legal Standardfor Obviousness
`
`A patent claim is invalid as obviousif the differences between the
`
`claimed subject matter and the prior art are “such that the subject matter as a
`
`whole would have been obviousat the time the invention was madeto a
`
`person havingordinaryskillinthe artto which said subjectmatter pertains.”
`35 U.S.C. § 103(a).
`
`The ultimate determination of obviousnessis a question of law,
`but that determination is based on underlying factualfindings. . .
`. The underlying factual findings include (1) “the scope and
`_content of the prior art,” (2) “differences between the prior art
`and the claims at issue,” (3) “the level of ordinary skill in the
`pertinentart,” and (4) the presence of secondary considerations
`of nonobviousness such “as commercial success, long felt but
`unsolved needs, failure of others,” and unexpected results.
`
`In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (citing inter alia
`
`Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)).
`
`“To satisfy its burden of proving obviousness, a petitioner cannot
`
`employ mere conclusory statements. The petitioner mustinstead articulate
`specific reasoning, based on evidenceofrecord, to support the legal
`conclusion of obviousness.” In re Magnum Oil Tools Int’l, Lid., 829 F.3d
`
`1364, 1380 (Fed. Cir. 2016). Furthermore, in assessing the priorart, the
`
`Board must consider whethera person ofordinary skill would have been
`
`7 Petitioner primarily relies on Examples 4 and5, but also cites Example 6.
`See, e.g., Pet. 27. We considerall cited portions of Ogino.
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`8
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`motivated to combinethe prior art to achieve the claimed invention.
`
`Nuvasive, 842 F.3d at 1381.
`
`Asthe Federal Circuit found, in quoting from the Supreme Court’s
`
`decision in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418-419 (2007),
`
`instances rely upon
`if not all,
`“because inventions in most,
`building blocks long since uncovered, and claimed discoveries
`almost of necessity will be combinations of what, in some sense,
`99 663
`is already known,”
`“it can be importantto identify a reason that
`would have prompted a person of ordinary skill in the relevant
`field to combine the elements in the way the claimed new
`invention does.”
`
`Personal Web Technologies, LLC v. Apple, Inc., 848 F.3d 987, 991-992
`
`(Fed. Cir. 2017).
`
`B. Level of Ordinary Skill in the Art
`
`Petitioner alleges a person having ordinary skill in the art would have
`
`had “‘(i) a bachelor’s degree in Physics, Optical Sciences, or equivalent
`
`training, as well as (ii) approximately three years of experience in designing
`
`multi-lens optical systems.” Pet. 7 (citing Ex. 1003 § 19%). Petitioner
`
`further alleges a person of ordinary skill “would have known how to use lens
`
`design software such as Code V, Oslo, or Zemax, and would have taken a
`
`lens design course.” Jd. (citing Ex. 1003 4 19). On this record, and for
`
`purposesof this Decision, we adopt Petitioner’s proposal.
`
`C.
`
`Claim Construction
`
`In an inter partes review fora petition filed on or after November 13,
`
`2018, a claim “shall be construed using the sameclaim construction standard
`
`8 Petitioneralters its citations to the Sasian Declaration (Ex. 1003) between
`page numbers and paragraph numbers. ComparePet. 7 (citing page) with
`Pet. 9 (citing paragraph). We refer to page numbers, which are used more
`often in the Petition, using paragraph numbersif neededforclarity.
`
`9
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`Patent 10,324,277 B2
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`that would be used to construe the claim in a civil action under 35 U.S.C.
`
`282(b).” See Changes to the Claim Construction Standard for Interpreting
`
`Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
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`Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
`
`November13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)); see
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`also Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en
`
`banc) (citation omitted).
`
`AsPetitioner alleges, we construed “effective focal length” and “total
`
`track length” in the final decisions in the ’1140 and ’1146 IPRs. Pet. 8, id. at
`
`fn. 2. Specifically, our analysis concluded “effective focal length” is “the
`
`focal length of a lens assembly.” °1140 IPR, Paper 37, 10; °1146 IPR, Paper
`
`37, 8. We further concluded “total track length” is “the length of the optical
`
`axis spacing between the object-side surface ofthe first lens element and one
`
`of: an electronic sensor, a film sensor, and an image plane corresponding to
`
`either the electronic sensoror a film sensor.” °1140 IPR, Paper 37, 10—18;
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`°1146 IPR, Paper 37, 8-14.
`
`Our reviewing court has held that “[c]Jollateral estoppel protects a
`
`party from havingto litigate issues that have been fully andfairly tried in a
`
`previous action and adversely resolved against a party-opponent.” Nestle
`
`USA, Inc. v. Steuben Foods, Inc., 884 F.3d 1350, 1351-1352 (Fed. Cir.
`
`2018) (quoting Ohio Willow Wood Co.v. Alps S., LLC, 735 F.3d 1333, 1342
`
`(Fed. Cir. 2013)). Collateral estoppel applies to claim construction. Jd.
`
`Collateral estoppel, also knownasissue preclusion, applies in the
`
`administrative context, specifically in inter partes review. Maxlinear, Inc. v.
`
`CF CRESPE LLC,880 F.3d 1373, 1376 (Fed. Cir. 2018).
`
`Both parties here fully participated in the °1140 and ’1146 IPRs. On
`
`this record and subject to any change on appealto the Federal Circuit, we
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`10
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`Patent 10,324,277 B2
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`apply the claim constructions from those proceedings here. At this stage of
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`the proceeding, we do not identify any other claim term requiring
`
`construction. Thus, the remaining words of the claims “are generally given
`
`their ordinary and customary meaning,” as understood by a person of
`
`ordinary skill in the art in question at the time of the invention. Phillips, 415
`
`F.3d at 1312-13.
`
`Wenote, however, that Petitioner proposes a different construction of
`
`TTL in IPR2020-00877, which involves the same parties. The parties
`
`should address during trial whether and whythe construction of this term
`
`should differ in these two IPRs.
`
`D. Obviousness of Claims 1-3 and 5-8 over Ogino Example 4 and Bareau
`
`Petitioner alleges claims 1-3 and S~8 would have been obvious over
`
`Ogino Example 4 and Bareau. Pet. 10. Petitioner also relies on the Sasian
`
`Declaration. Ex. 1003 f§ 44-62. The Sasian Declaration includes a claim
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`chart appendedto paragraph 62. Jd. at 34-60.
`
`I. Ogino (Ex. 1005)
`
`Ogino discloses a five-lens system for use in portable devices. Ex.
`
`1005, Abstract, 1:6-16. Ogino’s lens system is designed for use in “a digital
`
`still camera, a cellular phone with a camera, a mobile information terminal
`
`(PDA:Personal Digital Assistance), a smartphone,a tablet terminal, and a
`
`mobile game machine, on which the imaging lens is mounted to perform
`
`photography.” Jd. at 1:11-16.
`
`Figure 4 of Ogino is reproduced below.
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`11
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`FIG.4
`
`EXAMPLE 4
`
`=~ 400(R14) i
`
`f
`RZ
`
`R13
`
`Figure 4 is a lens cross-sectional view of an imaging lens
`corresponding to Example4.
`
`Ex. 1005, 4:1-4. Ogino explains that there is a demandfor five-lens systems
`
`in portable devices to “to enhance the resolution and performance of the
`
`imaging lens.” Jd. at 1:30-31.
`
`Asshownin Figure 4 above, Ogino’s Example 4 includesfive lenses
`
`in order from the object side, L1 through LS, each lens having an aspheric
`
`surface. Ex. 1005, 13:4-8. All embodiments, including the fourth
`
`embodiment shown above,include a “first lens L] that has a positive
`
`refractive power and a meniscus shape which is convex toward the object
`
`side” and a second lens L2 that has a biconcave shape. /d. at 13:8-11. In
`
`the fourth embodiment, the third lens L3 has a negative refractive power. Id.
`
`at 13:44-50. Also common amongall embodiments,“the fourth lens L4 that
`
`has a meniscus shape which is convex toward the imageside; andthefifth
`
`lens L5 that has a negative refractive power andhas at least one inflection
`
`point on an imageside surface.” Jd. at 13:5-16.
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`12
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`2. Bareau (Ex. 1012)
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`Bareau describes how “[d]esigning lenses for cell phone camerasis
`
`different from designing for traditional imaging systems.” Ex. 1012, 1.
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`Bareaus explainsthe “scale of cell phone camera systems creates particular
`
`challenges for the lens designer that are unique to this format.” Id.
`
`Bareau explainsthat “initial cell phone cameras were based around
`
`VGA and QVGA modules with 5.6um pixels with formats between 1/7” and
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`1/4” in size. Ex. 1012, 2. Bareaulists “typical lens specifications for a 4”
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`sensor format”for use in cellular telephones, including an f-numberof2.8.
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`Id. at 3-4. Bareau also indicates a TTL mustbeat least 0.050mm to protect
`
`the front of the lens. /d. at 3. Bareau states that “most camera module
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`customersspecify f/2.8, it is not uncommontoseelensesat f/3.0 and f/3.3
`
`whenthe increased fno has a significant effect on performanceor
`
`manufacturability.” Jd. at 4.
`
`3. Claim 1
`
`Limitation 1.0, the preamble of claim 1, recites “[a] lens assembly,
`
`comprising: a plurality of refractive lens elements arranged along an optical
`
`axis.” Petitioner cites to Figure 4, Example 4, of Ogino, lenses L1 through
`
`LS, and optical axis Z1 as meeting the preamble. Pet. 20—22 (citing Ex.
`
`1005, Fig. 4 (annotated at Pet. 21)). Petitioner alleges that all lenses are
`
`“refractive.” Id. at 21-22 (citing Ex. 1005, 9:11-12, 9:29, 7:51—-53, 7:67—
`
`8:1, 8:9). That the lenses are arranged along the optical axis Z1 is further
`
`supported by the Sasian Declaration. Jd. at 22—23 (citing Ex. 1003, 35-37,
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`App. Figs. 2A—2D).
`
`Whetheror not the preambleis limiting, Petitioner has sufficiently
`
`shownthat Ogino teaches the recited lens assembly.
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`13
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`Limitation 1.1 recites “wherein at least one surface of at least one of
`
`the plurality of lens elements is aspheric.” Ogino describes that the imaging
`
`lenses in Examples 1 through 6,“both surfaces of each of the first to fifth
`
`lenses L1 to L5 are aspheric.” Pet. 23—24 (citing Ex. 1005, 15:22—24)
`
`(emphasis omitted). Table 7 of Ogino showsspecific data for Example4.
`
`Ex. 1005, 15:18-22. Table 7 specifically further identifies “surface
`
`numbers” 1, 2, and 4-11. See id. at 17 (Table 4 (“Surface Number”), 19:28—
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`40, 20:28-40 (Table 7 (*1, *2, *4—*11 (“*ASPHERIC SURFACE”)).
`
`Petitioner relies on the preceding disclosures and alleges that lens surfaces 1,
`
`2, and 4-11 are aspheric and correspond to lenses L1 through L5. Pet. 23-
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`25 (citing Ex. 1005, 19:28-40, 20:28—-40 (Table 7, annotated at Pet. 24)); Ex.
`
`1003, 38).
`
`Petitioner has sufficiently shown that Ogino teaches the lens assembly
`
`has at least one aspheric lens, as recited in limitation 1.1.
`
`Limitation 1.2 recites “wherein the lens assembly has an effective
`
`focal length (EFL).” Petitioner alleges a person of ordinary skill would
`
`“understand the term ‘effective focal length’ (EFL) to describe the focal
`
`length of the entire lens system. In that regard, Oginostates “fis a focal
`
`length of a whole system.” Pet. 25 (citing Ex. 1005, 3:16; Ex. 1003, 38).
`
`Petitioner also cites to Table 7 andits disclosure of “f=4.555” as teaching
`
`EFL. /d. at 26 (citing Ex.1005, 19:28—40, 20:28—40 (Table 7, annotated at
`
`Pet. 26); Ex. 1003, 39).
`
`Petitioner has sufficiently shown that Ogino teaches the lens assembly
`
`has an EFL,asrecited in limitation 1.2.
`
`Limitation 1.3 recites “wherein a lens system that includes the lens
`
`assembly plus a window positioned between the plurality of lens elements
`
`and an imageplane hasa total track length (TTL) of 6.5 millimetersor less.”
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`14
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`Petitioner alleges cover glass (“CG”) is a “window”at 6.5 millimeters or
`
`less from the lens elements L1 through L5. Pet. 27—29 (citing Ex. 1005,
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`5:55-60, Fig. 4 (annotated at Pet. 28); Ex. 1003, 41-42). Petitioner
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`calculates TTL by summingthe distances listed in Table 7 between lenses of
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`Ogino, Di, as 4.362? mm. Jd. at 29 (citing Ex. 1005, 19:28—40, 20:28-40
`
`(Table 7, annotated at Pet. 29); Ex. 1003, 43); see also Ex. 1005, Fig. 4
`
`above(illustrating distances between lenses L1 to L5 as D1 through D13).
`
`Petitioner has sufficiently shown that Ogino teaches the lens assembly
`
`has a TTL of “6.5 millimeters or less,” as recited in limitation 1.3.
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`Limitation 1.4 recites “wherein a ratio TTL/EFLis less than 1.0.”
`
`Petitioner alleges “the EFL of Ogino’s Example [4] lens assembly is 4.555
`
`mm, as shownin Table 7.” Pet. 30 (citing Ex. 1005, 19:28—40, 20:28-40).
`
`Petitionercites to its showing regarding limitation 1.3 to allege “the TTL of
`
`Ogino’s Example [4] lens assembly with the cover glass elementis 4.362
`
`mm.” Jd. (citing Ex. 1005, 19:28—40, 20:28-40 (“summingdistances from
`
`D1-D13”). Petitioner calculates the ratio of TTL/EFLis 4.362/4.555, which
`
`equals 0.9576 andis less than 1.0. /d. (citing Ex. 1003, 44).
`
`Petitioner has sufficiently shown that Ogino teaches “a ratio of
`
`TTL/EFLofless than 1.0,” as recited in limitation 1.4.
`
`Limitation 1.5 recites “wherein the plurality of lens elements
`
`comprises, in order from an object side to an imageside,a first lens element
`
`with positive refractive power.” Petitioner again cites Ogino’s Example 4
`
`° Whilethis is the sum of D1 to D13 of Table 7, Table 7 specifically states
`“TL=4.260.” See Pet. 29 (citing Ex. 1005, 19:28—40, 20:28-40 (Table 7,
`annotated at Pet. 29). On this record, we accept the 4.362 mm calculation.
`See Ex. 1003, 40-44. Wealso note that if TL=4.260 thatis still less than the
`recited “6.5 millimeters or less” recited in limitation 1.3. This is also the
`case for limitation 1.4 discussed immediately below.
`
`15
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`Patent 10,324,277 B2
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`and its showing in connection with limitation 1.1. Pet. 31-32 (citing Ex.
`
`1005, Fig. 4 (annotated at Pet. 32); Ex. 1003, 45). Petitioner starts with lens
`
`L1’s optical data for the Example 4 lens in Table 13, f/f1 =2.49. Id. at 33
`
`(citing Table 13, annotated at Pet. 33)). Petitioner’s calculation next looks to
`
`the focal length of the entire system as shownfor limitation 1.2, which is
`
`4.555 mm. Id. (citing Ex. 1003, 46). Dividing the EFL of 4.555 into the
`
`f/f1 ratio the focal length for L1 alone is 4.555/2.49=1.829 mm. Jd. (citing
`
`Ex. 1003, 46). Relying on the Sasian Declaration, Petitioner alleges
`
`refractive poweris the inverse of focal length or 1/1.829 mm=0.5467 mm",
`
`which would have been understood by a person of ordinary skill to be a
`
`positive refractive power. Jd. at 33-34 (citing Ex. 1003, 46—47 (citing Ex.
`
`1010,!° 159)).
`
`Petitioner has sufficiently shown that Ogino teaches “afirst lens
`
`element with [a] positive refractive power,” as recited in limitation 1.5.
`
`Limitation 1.6 recites “a second lens element with negative refractive
`
`power.” Petitioner cites to its showing with respect to limitation 1.5 for lens
`
`L2. Pet. 34. Petitioner calculates L2’s focal length (f2) starting with the
`
`“entire Example 4 lens system (f) and the data provided in Table 13 for
`
`Example 4 showing f/f2=-1.83.” Jd. at 34-35 (citing 1005, 23:25-40 (Table
`
`13, annotated at Pet. 35); Ex. 1003, 47). Petitioner repeats the calculation
`
`method for limitation 1.5, [f2]=4.55 mm/-1.83=2.489 mm. /d. at 35 (citing
`
`Ex. 1003, 47). Petitioner then calculates refractive poweras the inverse of
`
`focal length, 1/-.2489=-0.4017 mm", whichis a negative refractive power.
`
`Id. (citing Ex. 1003, 48).
`
`0 Born M.and Wolf E., Principles ofOptics, (PergamonPress, 6" Ed.
`1980).
`
`
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`IPR2020-00897
`Patent 10,324,277 B2
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`Petitioner has sufficiently shown that Ogino teaches “a second lens
`
`element with [a] negative refractive power,” as recited in limitation 1.6.
`
`Limitation 1.7 recites “and a third lens element.” Petitioner alleges
`
`Ogino teachesthis limitation “because its Example 4 lens assembly includes
`
`a third lens L3.” Pet. 36-37 (citing Ex. 1005, Fig. 4 (annotated at Pet. 36);
`
`Ex. 1003, 48-49).
`
`Petitioner has sufficiently shown that Ogino teaches “a third lens
`
`element,” as recited in limitation 1.7.
`
`Limitation 1.8 recites “wherein a focal length fl ofthe first lens
`
`elementis smaller than TTL/2.” Petitioner alleges Ogino’s L1 lens, as
`
`shown in connection with Example 4 and limitation 1.5, has a focal length fl
`
`of 1.829 mm. Pet. 37 (citing Ex. 1003, 49). Petitioner alleges,as it did in
`
`connection with limitation 1.2, that “the TTL of the Example 5 lens
`
`assembly with the cover glass element is 4.362 mm.” Jd. Performing the
`
`calculation, Petitioner alleges the f1 of 1.829 is less than TTL divided by 2
`
`or 4.362 mm/2=2.181 mm. /d. (citing Ex. 1003, 49). Similarly, Petitioner
`
`contends that Ogino’s Example 4 lens assembly also meetsthe recited ratio
`
`because f1=1.829 mm and TTL/2=2.181 mm. Jd. (citing Ex. 1003, 49).
`
`Petitioner has sufficiently shown that Ogino teaches “a focal length fl
`
`of the first lens elementis smaller than TTL/2,”as recited in limitation 1.8.
`
`Limitation 1.9 recites ‘“‘and wherein a lens assembly F # is smaller
`
`than 2.9.” Petitioner relies on Bareau to show the f# limitation, requiring a
`
`combination of Ogino and Bareau. Pet. 38. Petitioner alleges a person of
`
`ordinary skill “would have found this modification to be both predictable
`
`and desirable due to Ogino’s other disclosed embodiments supporting a
`
`lower f-number and Bareau’s [] ‘teaching of cell phones supporting f-
`
`numbersof 2.8 or less.” Jd. (citing Ex. 1005, Figs. 8-13; Ex. 1003, 49).
`
`17
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`
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`IPR2020-00897
`Patent 10,324,277 B2
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`Petitioneralso cites to a desire for faster lenses. Jd. (citing Ex. 1013,’ 104).
`
`Petitioner relies on the Sasian Declaration to present Ogino’s Example 4
`
`modified with an f-numberof 2.8 is provided below with corresponding
`
`data. Id. at 38-39 (citing Ex. 1003, 50, Fig. 2A).
`
`Petitioner has sufficiently shown that a person of ordinary skill would
`
`have reasons to combine Ogino and Bareau. Further, the combination of
`
`Bareau with Ogino teaches ‘“‘a lens assembly F # is smaller than 2.9,” as
`
`recited in limitation 1.9.
`
`4. Claims 2-3 and 5-8
`
`Wehavereviewed Petitioner’s evidence and argument regarding
`
`claims 2—3 and 5-9. Pet. 39-51. We have also reviewed the evidence
`
`providedin the Sasian Declaration. Ex. 1003, 50-60.
`
`Specifically, claim 2 depends from claim 1 andrecites that “the third
`
`lens element has negative refractive power.” Petitionercites to its showing
`
`regarding limitations 1.6 and 1.7 as teaching a third lens with a negative
`
`refractive power. Pet. 39 (citing Ex. 1005, 23:25—40 (Table 13, annotated at
`
`Pet. 40); Ex. 1003, 51).
`
`Claim 3 also depends from claim 1 andrecites five lens elements, asis
`
`shownin Ogino, whichPetitioner relies on. Pet. 42 (citing Ex. 1005, Fig. 4
`
`(annotated at Pet. 42)).
`
`Claim 5 depends from claim 2 andrecites five lens elements where
`
`the fourth and fifth lenses have “different refractive power signs.” As with
`
`claim 3, Petitioner cites to Ogino’s Figure 4 for the five lens elements. Pet.
`
`43-44 (citing Ex. 1005, Fig. 4 (annotated at Pet. 44); Ex. 1010, 159, 161—
`
`'l Kingslake, R., Optics in Photography, (The Society of Photo-Optical
`Engineering, 1992).
`
`18
`
`
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`IPR2020-00897
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`162; Ex. 1003, 54). Asto the recitation of different refractive powers,
`
`Petitioner cites to Ogino and the Sasian Declaration as showing “[t]he
`refractive powerof lens elements L4 and LS are calculated [] by finding the
`reciprocal of their respective focal lengths calculated” as was done in
`
`limitation 1.5. Id. at 44-47 (citing Ex. 1005, 19:28-40, 20:28-40 (Table 7
`
`annotated at Pet. 45), 23:25—40 (Table 13, annotated at Pet. 46); Ex. 1003,
`
`55-57).
`
`Claim 6 depends from claim 3 but otherwise recites the subject matter
`
`of claim 5 regarding different refractive powers of the fourth andfifth
`
`lenses. Petitioner relies on its showing made in connection with claim 5.
`
`Pet. 47.
`
`Claim 7 depends from claim 3 andrecites ‘“‘a fourth lens element and a
`
`fifth lens element are separated by an air gap smaller than TTL/20.”
`
`Petitioner cites to Ogino’s Table 7 to obtain the distance between lenses L4
`
`and LS, the “air gap,” which is 0.151 mm. Pet. 48 (citing Ex. 1005, 19:28—
`
`40, 20:28-40 (Table 7, annotated at Pet. 48)). Petitioner takes its calculation
`
`of TTL from limitation 1.5, which is 4.362 mm,and calculates the recited
`
`“TTL/20” as 0.218 mm, whichis less than the air gap of 0.151 mm. Jd. at
`
`48-49 (citing Ex. 1003, 58-59).
`
`Claim 8 depends from claim 3 andrecites “one of a fourth lens
`
`element anda fifth lens elementis characterized by an Abbe numbersmaller
`
`than 30 and wherein the other of the fourth lens elementandthefifth lens
`
`element is characterized by an Abbe numbergreater than 50.” Petitioner
`
`again cites to Ogino’s Table 7 and the Sasian Declaration. Pet. 49-51 (citing
`
`Ex. 1005, 19:28—40, 20:28-40 (Table 7, annotated at Pet. 50; Ex. 1003, 60).
`
`Petitioner identifies the Abbe numbersfor lenses L4 and L5 directly from
`
`
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`IPR2020-00897
`Patent 10,324,277 B2
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`Table 7 as the “vdj” numbers of 23.63 and 54.87 respectively. Id. at 50
`
`(citing Ex. 1005, 14:45-47 (the vdj value is the Abbe number).
`
`Onthis record, Petitioner has sufficiently shown the limitations of
`
`claims 2—3 and 5-8.
`
`5. Conclusion
`
`Petitioner has shown a reasonable likelihood that claims 1-3 and 5-8
`
`would have been obvious over Ogino Example 4 and Bareau.
`
`E. Obviousness of Claims 1-24 over Ogino Example 5 and Bareau
`
`Petitioner alleges claims 1-24 would have been obvious over Ogino
`Example 5 and Bareau.'? Pet. 51. Petitioner also relies on the Sasian
`
`Declaration. Ex. 1003 J 63-77. The Sasian Declaration includes a claim
`
`chart appended to paragraph 77. Jd. at 71-110.
`
`1. Claim 1
`
`MuchofPetitioner’s showing for Example 5 of Oginois very similar
`
`to the showing madeabovein Section. IIJ.D.3 for Example 4 of Ogino.
`
`Compare Pet. 21 (annotated Fig. 4 of Ogino), with Pet. 60 (annotated Fig. 5
`
`of Ogino). Petitioner has sufficiently shown that Ogino Example 5 in
`
`combination with Bareau teachesall the limitations of claim 1.3 Petition’s
`
`allegations regarding claim 1 are summarized below.
`
`2 At the institution phase, onceit is determinedthat there is a reasonable
`likelihood that Petitioner will succeed on a single claim, review ofall claims
`is justified. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018). Having
`already determined Petitioner has met the reasonable likelihood standard
`with respect to claims 1—3 and 5-8, trial is instituted. Notwithstanding the
`preceding, we do not and neednotanalyzeall claims and/orlimitations
`underthis ground.
`13 Petitioner refers to a “second modification” of Example 5 as also teaching
`certain limitations. See, e.g., Pet. 62 (citing Ex. 1003, 76). The second
`modification is Example 5 “modified for an f-numberof 2.8,” as taught by
`
`20
`
`
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`IPR2020-00897
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`
`Forlimitation 1.0, the preamble of claim 1, Petitioner cites to Figure
`
`5, Example 5, of Ogino, lenses L1 through LS, and optical axis Z1 as
`
`meeting the preamble. Pet. 59-61 (citing Ex. 1005, Fig. 5 (annotated at Pet.
`
`60)). Petitioner alleges that all lenses are “refractive.” Jd. at 60 (citing Ex.
`
`1005, 9:11-12, 5:13-15). That the lenses are arranged along the optical axis
`
`Z1 is further supported by the Sasian Declaration. Jd. at 60 (citing Ex. 1003,
`
`75).
`
`Limitation 1.1 recites “wherein at least one surface of at least one of
`
`the plurality of lens elements is aspheric.” Ogino describes that the imaging
`
`lenses in Examples 1 through 6, “both surfaces of each ofthefirst to fifth
`
`lenses L1 to L5 are aspheric.” Pet. 61-62 (citing Ex. 1005, 15:22—24)
`
`(emphasis omitted). Table 9 of Ogino showsspecific data for Example 5.
`
`Id. at 61 Ex. 1005, 15:18~-22, 21:10—36 (Table 9, annotated at Pet. 62).
`
`Petitioner relies on the preceding disclosures and alleges that lens surfaces 1,
`
`2, and 4—11 are aspheric and correspondto lenses L1 through LS. Jd. at 61
`
`(citing Ex. 1005, Table 9 annotated; Ex. 1003, 76).
`
`Limitation 1.2 recites “wherein the lens assembly has an effective
`
`focal length (EFL).” Petitioner alleges a person of ordinary skill would
`
`understand “the term ‘effective focal length’ (EFL)’ is construed to mean
`
`‘
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