Trials@uspto.gov
`571-272-7822
`
`Paper 34
`Entered: December6, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`Vv.
`
`COREPHOTONICS LTD.,
`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.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`571-272-7822
`
`Paper 34
`Entered: December6, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`Vv.
`
`COREPHOTONICS LTD.,
`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.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`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 3 (‘‘Pet.’”’”). Corephotonics, Ltd. (“Patent Owner”) did not
`file a Preliminary Response. We instituted interpartes review on December
`8, 2020. Paper 8 (“Inst. Dec.”). Patent Ownerfiled a Response (Paper15,
`
`“PO Resp.”), Petitioner filed a Reply (Paper 22, “Reply”), and Patent Owner
`
`filed a Sur-Reply (Paper 23, “Sur-Reply”). A hearing was held on
`
`September8, 2021, and a transcript is of record. Paper 33 (‘Tr.”).
`
`Wehavejurisdiction under 35 U.S.C. § 314. Upon considering the
`
`record, for reasons discussed below, wefind claims 1—24 unpatentable.
`
`Il. BACKGROUND
`
`A. Real Parties in Interest
`
`Thereal parties in interest are Apple Inc. and Corephotonics, Ltd.
`
`Pet. 1.
`
`B. Related Matters
`
`Petitioner advises us that the ’277 patent is the subject of 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 sameparties, 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, [PR2018-01140 (“?1140 IPR”) and IPR2018-
`
`
`
`IPR2020-00897
`Patent 10,324,277 B2
`
`01146 (“1146 IPR”), which challenge respectively certain claims of U.S.
`Pat. Nos. 9,568,712 (“the ’712 patent”) and 9,402,032 (“the ’032 patent’). !»?
`
`Pet. 8, fn.2.
`
`Weidentify the following related administrative matters, including
`
`every application and patent claiming the benefit of the priority of the 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”) and U.S. Patent No.
`
`10,330,897 (“the ’897 patent”) claim priority to:
`
`Application No. 15/817,235 (now the °277 patent), which claims
`
`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 the ’712 patent), which claims
`
`priority to Application No. 14/932,319 (now 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 AJA trial proceedings, we note the following:
`
`IPR2020-00896 (challenges the °647 patent);
`
`' The ’277 patent is a continuation-in-part of the 712 patent whichis a
`continuation of the ’032 patent. Ex. 1001, at [63].
`* The °1140 and ’1146 IPRshave both terminatedin 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 Owner has appealed both decisions to
`the United States Court of Appeals for the Federal Circuit.
`’1140 IPR, Paper
`38; °1146 IPR, Paper 38.
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
`
`
`
`IPR2020-00897
`Patent 10,324,277 B2
`
`IPR2020-00878 (challenges the ’897 patent);
`IPR2019-00030 (challenges the ’568 patent);*
`
`IPR2018-01146 (challenges ’712 patent); and
`
`IPR2018-01140 (challenges the ’032 patent), as identified by
`
`Petitioner.
`
`C. The Technology and ’277 Patent
`
`The application for the ’277 patent was filed November19, 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) ofthe
`
`lens assembly enables good quality images. Jd. at 1:31-45. Thelatest lens
`
`designs use five lenses but the TTL/EFLratio is larger than desired. Jd. at
`
`1:41-45.
`
`4 The 030 IPR terminatedin a final written decision finding all challenged
`claims unpatentable. °030 IPR, Paper 32, 48; see also Corephotonics, Ltd. v.
`Apple Inc. & Andrew Hirshfeld, Intervenor2 (Appeal No. 2020-1961 (Fed.
`Cir. Oct. 25, 2021) (affirming final written decision).
`> Becausethe effective filing date of this patent is March 16, 2013, orlater,
`AIA § 103 applies to this proceeding. Ex. 1001, at [52], [60].
`
`4
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`IPR2020-00897
`Patent 10,324,277 B2
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`2.
`
`’277 Patent
`
`Figure 1A of the ’277 patent is reproduced below.
`
`
`
`FIG. 1A
`
`
`
`Figure 1A illustrates a first embodiment of 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 arranged in order along optical axis z
`
`from the object side of the system (the x axis) to the image side (image plane
`
`114). Id. at 3:25—46, 4:19 (discussing optical axis z). Each lens is ofa
`
`specific refractive power and shape. /d. at 3:19-44. An “image sensor (not
`
`shown)is disposed at image plane 114 for the image formation.” Jd. at
`
`3:44-46.
`
`Each ofthe five lenses of this embodimenthas refractive powers and
`
`shapes shownin 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 (/d. at 3:28-31);
`
`
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`IPR2020-00897
`Patent 10,324,277 B2
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`third lens 106 has a negative refractive power a concave object-
`side surface and a concave image-side surface (/d. at 3:31-33);
`
`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 claimsto “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. Claim1is
`
`reproducedbelow asillustrative.
`
`[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 least 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 windowpositioned between the plurality of lens elements and
`an imageplanehasa total track length (TTL) of 6.5 millimeters
`or less,
`
`[1.4] wherein a ratio TTL/EFLis less than 1.0,
`
`6 Each claim andits limitations are bracketed in the Petition. See, e.g., Pet.
`20 ([1.0] is the preamble of claim 1). We adopt this format for purposes of
`this Decision.
`
`
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`IPR2020-00897
`Patent 10,324,277 B2
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`[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,
`
`[1.7] and a third lens element,
`
`[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 Dec.”, Ex. 1003) and the Declaration of José
`
`’ Petitioner alleges Ogino “wasfiled on March 26, 2014 and claimspriority
`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 Oginois priorart.
`8 Petitioner alleges Bareau “was both presented publicly and published in
`2006 [Ex. 1003 4 50] andis prior art under §102(a)(1).” Pet. 9. On this
`record, we find that Bareauis prior art.
`
`7
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`IPR2020-00897
`Patent 10,324,277 B2
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`Sasian, PhD under 37 C.F.R. § 1.68 in Support of Petitioner Reply (“Sasian
`
`Reply Dec.,” Ex. 1037).
`
`Patent Ownerrelies, in part, on the Declaration of Tom D-Milster,
`
`Ph.D. Pursuant to 37 C.F.R. § 1.68 (“Milster Dec.,” Ex. 2001).
`
`F. Asserted Grounds
`Petitioner asserts that claims 1-24 would have been unpatentable on
`the following grounds(Pet. 9):
`
`
`Claims Challenged|35 U.S.C.§? Reference(s)/Basis
`
`
`1-3, 5-8
`Ogino Example 4,'° Bareau
`
`Ogino Example 5, Bareau
`
`
`
`
`
`Il. ANALYSIS
`
`A. Level ofOrdinary 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, 11!'). Petitioner further
`
`alleges a person ofordinary skill “would have knownhowtouselens design
`
`software such as Code V, Oslo, or Zemax, and would havetaken a lens
`
`° The Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, 125
`Stat. 284, 285-88 (2011) revised 35 U.S.C. §§ 102 and 103, effective March
`16, 2013. The ’277 patent has an effective filing date later than March 16,
`2013 (see Section II.C, fn. 5). Thus, the grounds asserted are under the AIA
`version of 35 U.S.C. § 103.
`10 Petitioner primarily relies on Examples 4 and5, but also cites Example 6.
`See, e.g., Pet. 27. We considerall cited portions of Ogino.
`'! Petitioner alternates its citations to the Sasian Declaration (Ex. 1003)
`between page numbers and paragraph numbers. Compare Pet. 7 (citing
`page) with Pet. 9 (citing paragraph). We refer to page numbers, which are
`used more often in the Petition, using paragraph cites when they are
`referenced.
`
`
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`IPR2020-00897
`Patent 10,324,277 B2
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`design course.” Jd. (citing Ex. 1003 § 19). Patent Owner“does not
`
`disagree” with Petitioner’s proposed description of a person of ordinary skill
`
`in the art. PO Resp. 12 (citing Ex. 2001 § 20). On this record, and to the
`
`extent relevantto our findings, we adopt Petitioner’s proposal whichis
`
`consistent with the prior art of record.
`
`B.
`
`Claim Construction
`
`In an inter partes review for a petition filed on or after November 13,
`
`2018, a claim “shall be construed using the same claim construction standard
`
`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
`
`Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
`
`November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)); see
`
`also Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en
`
`banc)(citation omitted). The Petition here was accordeda filing date of
`
`May4, 2020 (Paper7), and the district court construction standard applies.
`
`1.
`
`“effective focal length” and “total track length”
`
`AsPetitioner alleges, we construed “effective focal length” (EFL”)
`and “total track length” (“TTL”)! 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
`
`!2 Wealso notedin the Institution Decision that Petitioner proposed a
`different construction of TTL in IPR2020-00877 (“’877 IPR”), which
`involves the sameparties. Inst. Dec. 11. The parties were advised to
`“address during trial whether and whythe construction of this term should
`differ.” Jd. Neither party did so.
`
`
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`IPR2020-00897
`Patent 10,324,277 B2
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`length” is “the length of the optical axis spacing between the object-side
`
`surface ofthe first lens element and oneof: an electronic sensor, a film
`
`sensor, and an imageplane correspondingto either the electronic sensor or a
`
`film sensor.” ’1140 IPR, Paper 37, 10-18; °1146 IPR, Paper 37, 8-14. The
`
`challenged patents in the 71140 and ’1146 IPRs share commonsubject
`
`matter with the °277 patent. See Section II.B above.
`
`Neither party disputes the constructions of EFL and TTL from the
`
`°1140 or °1146 IPRsasset forth above. Pet. 8; PO Resp. 13. There is no
`
`dispute as to the meaning of EFL or TFL. Accordingly,to the extent
`relevant and to complete the record, we maintain the above constructions of
`
`EFL and TTL for purposes of this Decision.
`
`2. Remaining claim terms
`
`In the Institution Decision, we determined no other claim term
`
`required construction. Inst. Dec. 10-11. Both parties agree that the
`
`remaining wordsofthe claims do not require express construction and are
`
`given their ordinary and customary meaning as understood by a person of
`
`ordinary skill in the art. Pet. 8; PO Resp. 13.
`
`C. Obviousness Legal Standard
`
`A patent claim is invalid as obviousif the differences between the
`
`claimed invention andthepriorart are “such that the claimed invention as a
`
`whole would have been obviousbefore the effective filing date of the
`
`claimed invention to a person having ordinary skill in the art to which the
`
`claimed invention pertains.” 35 U.S.C. § 103.
`
`The ultimate determination of obviousnessis a question of law,
`but that determination is based on underlying factual findings.
`... 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
`
`10
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`IPR2020-00897
`Patent 10,324,277 B2
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`pertinent art,” 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 must instead articulate
`
`specific reasoning, based on evidence ofrecord, to support the legal
`
`conclusion of obviousness.” In re Magnum Oil Tools Int'l, Ltd., 829 F.3d
`
`1364, 1380 (ed. Cir. 2016). Furthermore, in asscssing the prior art, the
`
`Board must consider whethera person of ordinary skill would have been
`
`motivated to combinethe priorart 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
`“because inventions in most, if not all,
`building blocks long since uncovered, and claimed discoveries
`almost of necessity will be combinations of what, in somesense,
`is already known,”“it can be important to 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).
`
`D. Patent Owner’s Patentability Arguments on Design and Manufacturing
`Considerations
`
`Patent Ownerarguesall claims of the ’277 patent remain patentable
`
`overall of Petitioner’s asserted grounds of unpatentability. PO Resp. 23-30
`
`11
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`IPR2020-00897
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`(first ground), 40—54 (second ground);!? Sur-Reply 4; see Sections I.E and
`
`F below. Patent Ownerargues Petitioner’s unpatentability analysis is
`
`“incomplete and ignores howa[person ofordinary skill in the art] would
`
`have designed an optical lens assembly.” PO Resp. 23-30 (citing Ex. 2001
`
`{{ 76-79, 83). Patent Owneralso argues Petitioner’s unpatentability
`
`analysis “does not address the tolerances and manufacturability of the design
`
`that would necessarily be considered by a [person of ordinary skill in the
`
`art].” Jd. at 31 (citing Ex. 2001 4 90). Patent Owner’s arguments on design
`
`and manufacturing considerations are found throughout Patent Owner’s
`
`briefs. See generally, PO Resp. 31-55 (grounds | and 2); Sur-Reply 8.
`
`Patent Ownerrelies on the non-precedential opinion in the final
`
`decision in the ’030 IPR to argue that manufacturing concernsare relevant to
`
`whethera person ofordinary skill in the art would have modified the prior
`art in the mannerPetitioner proposes. Tr. 36:15—23. The 030 IPRfinal
`decision finds a lens designer of ordinary skill would have “taken into
`
`account manufacturing concerns.” °030 IPR, Paper 32 at 18; see also Sur-
`
`. is not directed toward the claim limitations,
`.
`Reply 8 (“manufacturability .
`but rather to whether a [person of ordinary skill in the art] would have
`considered manufacturability”). We find that the knowledgeofa lens
`
`designer of ordinary skill in the art includes familiarity with manufacturing
`
`and fabrication. See Section HII.A above.
`
`Notwithstanding the preceding finding, Patent Owner’s counsel was
`
`unableto cite authority reflecting how manufacturability is relevant to the
`
`13 Patent Owner’s argumentsfor the first ground are very similar for the
`second ground. Compare PO Resp. 31 (ground 1) with PO Resp.40 (both
`arguing “Petitioner ignores the manufacturability of the lenses”). Forthis
`Section III.D wediscussthe first ground as representative.
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`12
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`IPR2020-00897
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`ultimate conclusion of obviousness. Tr. 37:5-39:4.4 That a person of
`ordinary skill would consider manufacturing issues does not answer whether
`the claimed subject matter would have been obviousto that person. The
`
`level of ordinary skill in the art is only part of the obviousness inquiry. For
`
`example, neither Patent Ownernorits expert explain sufficiently how the
`manufacturing arguments show any “differences between the prior art and
`
`the claimsat issue.” See Graham, 383 U.S. at 17-18. This is an
`
`unsurprising result because, as we find below,the claims do notrecite any
`
`manufacturing requirements.
`
`Patent Ownerdoesnotspecifically argue that the Petition lacks a
`
`sufficient showing of reasons to combine Ogino Examples4 or 5 and
`Bareau. See generally PO Resp. Patent Owner does argue that a person of
`
`\4 The colloquy from the cited portion of the transcript reads as follows:
`JUDGE ANDERSON:Well, so that — that’s interesting, but is
`there any legal authority other than this non-precedential
`opinion, which is on appealas I understandit, to support patent
`owner’s view that in some way manufacturing concerns are
`relevant to whether a person ofordinary skill in the art would
`make this modification?
`MR.LINK:Well, Your Honor, I believe -- you know, going
`back to the very basics, in an obviousness analysis the person of
`ordinary skill in the art is required to look at the entire scope of
`the prior art... . And so a person ofordinary skill in theart
`would needto -- necessarily need to consider that to make sure
`that they could in fact create this lens assembly.
`JUDGE ANDERSON:Theyneed to consider what?
`MR.LINK:They would need to consider the manufacturability.
`That is could a design that they created be manufactured?
`JUDGE ANDERSON: So my question is do you have anylegal
`authority to support that position?
`MR.LINK:Well, beyondthis -- you know,this prior holding
`here, no....
`
`13
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`ordinary skill would not combine the references based on various
`
`manufacturing considerations. See, e.g., id. at 37 (a person ofordinary skill
`
`“would not have modified Ogino Example 4” with Bareau because of
`
`relative illumination considerations). Patent Ownerarguesthat “in some
`
`instancesthe prior art teaches away from the proposed combination.” Jd.at
`
`1, 10. At their core, all of Patent Owner’s arguments relate to physical
`combinability of the references based on manufacturing issues and are not
`reasonsa personof ordinary skill would not have combinedthe references.
`
`See SectionsIII.E.5 and III.F.8 below (analyzing the reasons for combining
`
`~
`the references).
`Neither does Patent Owneridentify any theory ofpatentability based
`on an alleged inability to manufacture the claimed invention. As noted
`
`above, problemsin physically combining references are irrelevant to
`whethera person of ordinary skill would have had reason to combine the
`
`references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (test for
`
`obviousnessis not “whether the features of a secondary reference may be
`
`bodily incorporated into the structure of the primary reference; noris it that
`the claimed invention must be expressly suggested in any oneorall of the
`references”).
`
`Wefind that design and manufacturing considerations are not recited
`
`in any of the claims and cannot be imported into them. See Reply 9-10. On
`
`this record, manufacturing considerations would not have been a reason
`
`preventing a person ofordinary skill in the relevantfield from combining the
`elements in the way the claimed new invention does. See Personal Web
`
`Technologies, 848 F.3d at 991-992; see, e.g., PO Resp. 31 (arguing the
`
`Petition does not address “tolerances and manufacturability” in combining
`
`Ogino Example 4 and Bareau). This finding is supported by the claim
`
`14
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`language, which doesnotrecite any design and manufacturing consideration.
`
`See, e.g., Ex. 1001, 8:22-36 (claim 1, reproduced above in Section II.D).
`
`Based on Patent Owner’s inability to articulate any legal theory supporting
`
`its position on manufacturability, we further find that a person of ordinary
`
`skill would “not wholly reject a design because it did not meet various
`
`manufacturing considerations.” See Reply 13 (citing Ex. 1037 { 22).
`
`Thefinding is also by supported by testimony from Patent Owner’s
`
`and Petitioner’s experts. Relative to manufacturing, Dr. Milstertestified the
`
`claims of the ’277 patent do not recite manufacturing considerations “other
`
`than what’s understood -- would be understood by a [person of ordinary skill
`
`in the art].” Milster Deposition (“Milster Dep.,” Ex. 1028, 90:13—-91:4); see
`
`also Ex. 1037
`
`17 (relying on the above Milster Deposition testimony to
`
`assert the claims “do not recite any manufacturing requirements”).
`
`In the °030 IPR, Patent Owner’s expert, Dr. Moore,testified that
`
`“engineers on lens design teams do not know, and do notcare, about the
`
`special manufacturing concerns that crop up during the production of
`polymerlens designs.” Ex. 1030,!° 56 (emphasisoriginal). Petitioner
`argues Patent Ownerinconsistently argues that manufacturing considerations
`are relevant here when they were arguedas beingirrelevant in the °030 IPR.
`Reply 12.
`.
`Notwithstanding our overall conclusion regarding manufacturability,
`
`we analyze Patent Owner’s design and manufacturing arguments in Sections
`
`III.E.6 and III.F.9 below. Petitioner’s showing and any remaining
`
`arguments of Patent Ownerare also discussed.
`
`15 Declaration of Duncan Moore, Ph.D. Pursuant to 37 C.F.R. § 1.68 in
`°030 IPR.
`
`15
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`
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`IPR2020-00897
`Patent 10,324,277 B2
`
`E. Obviousness ofClaims 1-3 and 5-8 over Ogino Example 4 and Bareau
`
`Petitioner alleges claims 1-3 and 5—8 would have been obvious over
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`Ogino Example 4 and Bareau. Pet. 10. Petitioner also relies on the Sasian
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`Declaration and the Sasian Reply Declaration. Ex. 1003 {J 44-62; Ex. 1037
`
`q{ 12-73. The Sasiaén Declaration includes a claim chart for this ground
`
`appended to paragraph 62. Ex. 1003, 34-60.
`
`1. Ogino Example 4 (Ex. 1005)
`
`Oginodiscloses 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
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`(PDA:Personal Digital Assistance), a smartphone,a tablet terminal, and a
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`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.
`
`EXAMPLE 4
`
`FIG.4
`
`~—100(R14)
`
`16
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`
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`IPR2020-00897
`Patent 10,324,277 B2
`
`Figure 4 is a lens cross-sectional view of an imaging lens corresponding
`to Example 4.
`
`Ex. 1005, 4:14. Ogino explains that there is a demandfor five-lens systems
`
`in portable devices to “to enhance the resolution and performanceofthe
`
`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 L5, each lens having an aspheric
`
`surface. Ex. 1005, 13:4-8. All embodiments, including the fourth
`
`embodimentdisclosed in Ogino, which is shownabove,includea “first lens
`
`LI 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. Jd.
`
`at 13:8-11. In the fourth embodiment, the third lens L3 has a negative
`
`refractive power. Jd. at 13:44-50. Also common amongall embodiments,
`
`“the fourth lens L4 .. . has a meniscus shape which is convex towardthe
`
`imageside; andthe fifth lens L5 .
`
`.
`
`. has a negative refractive power and has
`
`at least one inflection point on an image side surface.” Jd. at 13:5-16. The
`
`specific lens data for the lens system of Example 4 is described in Table 7.
`
`Id. at 15:18-22, 19:28—40, 20:28-40.
`
`2. Bareau (Ex. 1012)
`
`Bareau describes how “[d]esigning lenses for cell phone camerasis
`
`different from designing for traditional imaging systems.” Ex. 1012,1.
`
`Bareau explains the “scale of cell phone camera systemscreates particular
`
`challenges for the lens designer that are uniqueto this format.” Jd.
`
`Bareau explainsthat “initial cell phone cameras were based around
`
`VGA and QVGA modules with 5.6 um pixels” with formats between 1/7”
`
`and 1/4”in size. Ex. 1012, 2. Bareaulists “typical lens specifications for a
`
`¥,” sensor format”for use in cellular telephones, including an f-numberof
`
`17
`
`
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`IPR2020-00897
`Patent 10,324,277 B2
`
`2.8. 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 customersspecify f/2.8,it is not uncommontoseelensesat f/3.0 and
`
`f/3.3 when the increased fno has a significant effect on performance or
`
`manufacturability.” Jd. at 4.
`
`3. Claim ]
`
`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.” Jd. at 21-22 (citing Ex. 1005, 9:11-12, 9:29, 7:51—-53, 7:67—
`
`8:1, 8:8). 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,
`
`115-118 (Figs. 2A-2D)).
`
`Limitation 1.1 recites “wherein at least one surface of at least one of
`
`the plurality of lens elements is aspheric.” Ogino describes that in the
`
`imaging lenses in Examples 1 through 6, “both surfaces of each ofthe 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 Example
`
`4, 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-
`
`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 correspondto lenses L1 through L5. Pet. 23-
`
`25 (citing Ex. 1005, 19:28-40, 20:28-40 (Table 7, annotated at Pet. 24));
`
`Ex. 1003, 38).
`
`18
`
`
`
`IPR2020-00897
`Patent 10,324,277 B2
`
`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. Jd. at 26 (citing Ex. 1005, 19:28-40, 20:28-40 (Table 7, annotated at
`
`Pet. 26); Ex. 1003, 39).
`
`Limitation 1.3 recites “wherein a lens system that includes the lens
`
`assembly plus a windowpositioned betweenthe plurality of lens elements
`and an imageplanehasa total track length (TTL) of 6.5 millimeters orless.”
`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,
`
`5:55-60, Fig. 4 (annotated at Pet. 28); Ex. 1003, 41-42). Petitioner
`
`calculates TTL by summingthe distances (Di) listed in Table 7 between
`lenses of Ogando as 4.362'° mm. Id. 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).
`
`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).
`
`16 While this 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 thatstill falls within
`the recited “6.5 millimeters or less” recited in limitation 1.3. This is also the
`case for limitation 1.4 discussed immediately below.
`
`19
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`
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`IPR2020-00897
`Patent 10,324,277 B2
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`Petitioner cites to its showing regarding limitation 1.3 to allege “the TTL of
`
`Ogino’s Example [4] lens assembly with the cover glass element is 4.362
`
`mm.” Jd. (citing Ex. 1005, 19:28-40, 20:28-40 (“summing distances from
`
`D1-D13”). Petitioner calculates the ratio of TTL/EFL as 4.362/4.555,
`
`which equals 0.9576 andis less than 1.0. Jd. (citing Ex. 1003, 44).
`
`Limitation 1.5 recites “wherein the plurality of lens elements
`
`comprises, in order from an objectside to an imageside, a first lens element
`
`with positive refractive power.” Petitioner again cites Ogino’s Example 4
`
`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 shownforlimitation 1.2, which is
`
`4.555 mm. Jd. (citing Ex. 1003, 46). Dividing the EFL of 4.555 intothe f/f]
`
`ratio the focal length for L1 alone is 4.555/2.49=1.829 mm.
`
`/d. (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. Id. at 33-34 (citing Ex. 1003, 46-47(citing Ex. 1010,"
`
`159)).
`
`Limitation 1.6 recites “a second lens element with negative refractive
`
`power.” Petitioner cites to its showing with respectto 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
`
`17 Born M. and Wolf E., Principles ofOptics, (PergamonPress, 6" Ed.
`1980).
`
`20
`
`
`
`IPR2020-00897
`Patent 10,324,277 B2
`
`Example 4 showing f/f2=-1.83.” Id. 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 ca
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