IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`SHERMAN DIVISION
`
`LARGAN PRECISION CO., LTD.,
`
`Plaintiff,
`
`v.
`
`ABILITY OPTO-ELECTRONICS
`TECHNOLOGY CO., LTD.; NEWMAX
`TECHNOLOGY CO., LTD.; AND HP
`INC.
`
`Defendants.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Civil Action No. 4:19-CV-696-ALM
`Jury Trial Demanded
`
`DEFENDANTS’ INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 8,988,796
`
`Pursuant to Local Patent Rule 3-3 and the Court’s Amended Scheduling Order (D.I. 80),
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`Defendants Ability Opto-Electronics Technology Co., Ltd. (“Ability”), Newmax Technology Co.,
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`Ltd. (“Newmax”), and HP Inc. (“HP”) (collectively “Defendants”) disclose these Invalidity
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`Contentions for U.S. Patent No. 8,988,796 (“the ’796 Patent”).
`
`Introduction
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`Defendants disclose these Invalidity Contentions for claims 1–9, 11, and 15–251 of the ’796
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`Patent (“the Asserted Claims”) asserted by Plaintiff Largan Precision Co., Ltd. (“Largan”) in its
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`April 2, 2020 Disclosure of Asserted Claims and Infringement Contentions (“Infringement
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`Contentions”)2. Defendants contend that each of the claims asserted by Largan is invalid under at
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`least one or more of 35 U.S.C. §§ 101, 102, 103, and 112.
`
`1 The cover pleading of Largan’s Infringement Contentions does not identify claim 23 as an asserted claim
`of the ’796 Patent. However, some of Largan’s Local P.R. 3-1 claim charts include claim 23. Defendants therefore
`have included claim 23 in these Invalidity Contentions.
`2 It is unclear from Largan’s infringement contentions which Newmax products are accused of infringing
`which claims. As such, Newmax joins each claim of these invalidity contentions only to the extent that that Largan
`is accusing Newmax of infringement of a particular claim. In other words, Newmax only joins the contentions for
`claims that Largan has asserted or later asserts against Newmax in this case.
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`-1-
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`EX 2001 Page 1
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`

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`Defendants have based these Invalidity Contentions, in part, upon Largan’s Infringement
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`Contentions, including Largan’s apparent claim constructions and the allegedly-infringing features
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`of the Accused Instrumentalities. However, Largan’s Infringement Contentions fail to comply
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`with Local P.R. 3-1 because they do not provide reasonable notice of Largan’s infringement
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`theories.3 In the event that Largan seeks to amend its Infringement Contentions or otherwise
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`provide further detail about its infringement theories and/or the Court permits Largan to assert
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`additional claims or infringement theories against Defendants in the future, Defendants reserve the
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`right to supplement and amend these Invalidity Contentions or to otherwise disclose new or
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`supplemental invalidity contentions regarding such claims. Further, nothing herein is an admission
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`that Largan’s Infringement Contentions are correct.
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`The Court has not yet entered a claim construction order and claim construction discovery
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`has not yet begun. Defendants expressly reserve the right to propose alternatives to and to rebut
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`Largan’s claim constructions. Defendants also reserve the right to supplement and amend these
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`Invalidity Contentions consistent with Local P.R. 3-6, including the addition of prior art and
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`grounds for invalidity, whether currently known or unknown to Defendants once the Court has
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`issued a claim construction order and in the event that Largan amends its Infringement Contentions
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`following any such order.
`
`The Court has not determined whether any or all parts of the preamble of the Asserted
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`Claims are limitations. To the extent that Defendants have charted or otherwise discuss the claim
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`preambles in these Invalidity Contentions, their doing so is not an admission that the preambles
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`are limiting. Defendants expressly reserve the right to assert that the claim preambles are not
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`limiting, in whole or in part, during claim construction discovery and briefing.
`
`
`3 See, e.g., April 16, 2020 Letter from K. Davis to B. Sigler, May 1, 2020 Letter from D. Hoffman to B.
`Sigler, and May 15, 2020 Letter from B. Stroy to B. Sigler.
`
`
`
`- 2 -
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`
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`EX 2001 Page 2
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`

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`For purposes of these Invalidity Contentions, Defendants have presumed the priority date
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`for the ’796 Patent to be October 29, 2013. Nonetheless, Largan retains the burden of proof on
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`the issue of priority, and Defendants reserve the right to dispute that the ’796 Patent has a valid
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`priority claim to this date. If the Court finds that the ’796 Patent is not entitled to this priority date,
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`or Largan attempts to amend its priority date, Defendants reserve the right to supplement or amend
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`these Invalidity Contentions, including to identify additional prior art based on any revised priority
`
`date.
`
`The obviousness combinations disclosed in these Invalidity Contentions under 35 U.S.C.
`
`§ 103 are exemplary and are not intended to be exhaustive. Alternative and additional obviousness
`
`combinations of the prior-art references identified in these Invalidity Contentions are possible, and
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`Defendants reserve the right to use any such combinations in this litigation.
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`Defendants are currently unaware of the extent, if any, that Largan contends that the prior
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`art does not disclose the claim limitations. To the extent that Largan disputes that a claim limitation
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`is met by a prior-art reference, Defendants reserve the right to identify other prior-art references
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`having the allegedly-missing limitation and that it would have been obvious to combine with the
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`prior-art reference in order to supply the allegedly-missing limitation.
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`Defendants’ investigation into prior art remains ongoing. This includes Defendants’
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`investigation into the prior art referred to in these Invalidity Contentions, into prior art not yet
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`known to Defendants, into third-party prior art, and into related evidence, documents, and
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`knowledgeable witnesses. For example, third party Apple has indicated that it plans to produce
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`documents responsive to the subpoena HP served on February 17, 2020, but Apple’s response has
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`been significantly slowed down by the ongoing coronavirus pandemic. By way of further example,
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`despite numerous attempts to serve third party Genius at its offices in California, HP’s process
`
`
`
`- 3 -
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`EX 2001 Page 3
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`

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`servers have been unable to get someone in the office to open the door. Defendants intend to
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`pursue this and other third-party discovery as to prior art products and systems. Moreover, prior
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`art may become relevant depending on the claim constructions Largan asserts, the claim
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`constructions the Court adopts, and as Largan provides further detail about its Infringement
`
`Contentions. Additional evidence and information about prior art, including documentation and
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`witness testimony, may later be discovered and presented. The inventor has not been deposed to
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`date – defendants expect the inventor testimony to open up additional avenues of prior art
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`discovery including prior art computer programs used to develop and optimize optical lens
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`systems. Accordingly, Defendants reserve the right to present this additional evidence and
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`information in support of these Invalidity Contentions, and to supplement and amend these
`
`Invalidity Contentions in a manner consistent with the Federal Rules of Civil Procedure and the
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`Court’s rules, including the Patent Rules.
`
`Invalidity Contentions
`
`I.
`
`Patent Rule 3-3(a)
`
`Defendants identify below the prior art now known to Defendants that anticipates or
`
`renders obvious the Asserted Claims. Defendants have identified at least one representative or
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`exemplary disclosure of a limitation for each prior-art reference, for purposes of providing notice
`
`of their contentions regarding anticipation and obviousness. Accordingly, each and every
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`disclosure of the same limitation in the same reference is not necessarily identified, even where a
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`reference may contain additional support for or discussion of a particular claim limitation.
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`Defendants and their experts may rely upon, discuss, analyze, and cite other portions of each prior-
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`art reference that are similar to the representative or exemplary disclosures provided for the prior-
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`art reference. To the extent that they are prior art, Defendants and their experts also reserve the
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`
`
`- 4 -
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`
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`EX 2001 Page 4
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`

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`right to rely upon foreign counterparts of the U.S. patents and patent applications identified in the
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`Invalidity Contentions and/or U.S. counterparts of foreign patents and foreign patent applications
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`identified in the Invalidity Contentions. Defendants may also rely on statements found in the
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`Asserted Patents and/or their prosecution histories, related patents and/or patent applications, any
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`deposition or expert testimony, and/or documents or evidence submitted by Largan during this
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`litigation.
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`Persons of ordinary skill in the art generally read an item of prior art as a whole and in the
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`context of other publications and literature. Thus, to understand and interpret any specific
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`statement or disclosure within a prior-art reference, such persons would rely on other information
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`within the reference, along with other publications and their general scientific knowledge.
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`Defendants therefore also may rely upon uncited portions of the prior-art references and on other
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`publications and expert testimony to provide context and explanation, and as aids to understanding
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`and interpreting the portions that are identified for the priorart.
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`
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`A.
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`Prior Art Patents and Published Patent Applications Under 35 U.S.C.
`
`
`§ 102(a).
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`Country Of Origin|Patent/Pub. No. Inventor Filing Date Issue/Pub.
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`Date
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`United States Apr. 30,2003‘|Jun. 1, 2004US 6,744,570 Bl
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`UnitedStates
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`US6,747,816 B2
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`Feb. 19, 2002
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`Jun. 8, 2004
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`United States Nov. 27, 2002|Aug. 10, 2004US 6,775,074 B2
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`Sep. 25, 2007
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`US 7,009,783 B2 = Jun. 27, 2003
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`United States May28, 2004|Mar. 7, 2006US 7,009,784 B2
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`United States May 11,2004|Aug. 22, 2006US 7,095,570 B2
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`US 7,274,518 B2
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`EX 2001 Page 5
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`EX 2001 Page 5
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`Country Of Origin|Patent/Pub. No. Inventor Filing Date Issue/Pub.
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`US8,189,272 B1
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`Oct. 7, 2010
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`Apr. 12, 2007
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`EX 2001 Page 6
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`US8.284.502 B2
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`US 8,879,173 B2 Oct. 24,2012|Nov. 4, 2014
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`US 8,908,289 B2 Sep. 30,2013|Dec. 9,2014
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`US 9,013,811 B2
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`Jan. 8, 2014
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`Apr. 21, 2015
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`EX 2001 Page 6
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`

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`Country Of Origin|Patent/Pub. No. Inventor Filing Date Issue/Pub.
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`US 2012/0147249 Al
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`Nov. 22,2011|Jun. 14, 2012
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`B.
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`Prior Art Publications Under 35 U.S.C. § 102(a).
`
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`Title Date of Publication|Author(s) and
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`Publisher
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` AUTOMATED RE-INVENTION OF SIX
`
`
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`Cope V TgsT DRIVE V 9.8
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`PATENTED OPTICAL LENS SYSTEMS USING
`
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`GENETIC PROGRAMMING
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`Aug. 2007
`
`
`Jun. 2005
`
`
`
`Optical Research
`
`Associates
`
`
`
`John R. Koza
`
`
`
`SameerH. Al-Sakran
`
`
`
`Lee W. Jones
`
`
`
`
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`GECCO ’05, Proc. of
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`7th Annual Conf. on
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`Genetic and
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`EX 2001 Page 7
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`EX 2001 Page 7
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`

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`Title Date of Publication|Author(s) and
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`Publisher
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`Evolutionary
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`Computation
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`INFRARED OPTICS AND ZOOM LENSES, CHAP.|2009 Soc. of Photo-Optical
`
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`
`4,2: OPTICAL DESIGN TECHNIQUES
`Instrumentation
`
`Engineers
`
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`
`
`LENS SYSTEM DESIGN AND RE-ENGINEERING|Jul. 2002 Julie Beaulieu
`
`
`
`
`WITH EVOLUTIONARY ALGORITHMS
`Christian Gagné
`
`
`
`MarcParizeau
`
`
`
`
`
`OPTICAL SYSTEM DEsIGN, 2“” EDITION
`
`
`
`2008
`
`
`
`
`
`
`MoveERN LENS DESIGN: A RESOURCE
`
`
`MANUAL
`
`
`
`1992
`
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`
`MOoDERN LENs DEsIGN,2"” EDITION
`
`
`
`2005
`
`
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`
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`GECCO ’02, Proc. of
`4 Annual Conf. on
`
`
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`
`
`
`Genetic and
`
`Evolutionary
`
`Computation
`
`
`
`Robert E. Fischer
`
`
`Biljana Tadic-Galeb
`
`
`
`Paul R. Yoder
`
`
`McGraw-Hill
`
`
`
`Warren J. Smith
`
`
`McGraw-Hill
`
`
`
`Warren J. Smith
`
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`
`
`McGraw-Hill
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`MobDERN OPTICAL ENGINEERING, 3® EDITION|2000 Warren J. Smith
`
`
`McGraw-Hill
`
`
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`
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`
`MOoDERN OPTICAL ENGINEERING, 4™ EDITION|2008 Warren J. Smith
`
`McGraw-Hill
`
`
`
`c
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`Prior Art Apparatuses and Systems Under 35 U.S.C. § 102(a).
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`Defendants do not have any disclosures of any prior art apparatuses and systems under 35
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`U.S.C. § 102(a) at this tme. Discovery is ongoing, however, and Defendants reserve the right to
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`amend and supplement these § 102(a) contentions with respect to prior art apparatuses and systems
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`as they obtain further information and discovery.
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`Kk ROR KK
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`EX 2001 Page 8
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`In addition to the prior art listed above, the attached Appendix A contains a complete list
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`of prior art patents and published patent applications under 35 U.S.C. §§ 102(a), (b), (e) and (g)
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`and prior art publications under 35 U.S.C. §§ 102(a), (b) and (g) that may be relevant to the ’796
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`Patent.
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`All prior art listed in Defendants’ Invalidity Contentions for U.S. Patent Nos. 7,274,518
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`(“the ’518 Patent”), 9,146,378 (“the ’378 Patent”), and 8,395,691 (“the ’691 Patent”) is
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`incorporated herein by reference and is part of these Invalidity Contentions to the extent it is prior
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`art to the ’796 Patent under the meaning of Post-AIA 35 U.S.C. § 102.
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`Some or all of the prior art identified above, or other prior art that has not yet been
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`identified, will be the subject of continuing investigation and discovery, including third party
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`discovery. Defendants reserve the right to supplement and amend these Invalidity Contentions
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`consistent with the Federal Rules and the Local Patent Rules, in the event that additional
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`information is discovered relating to these prior art.
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`II.
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`Patent Rule 3-3(b)–(c)
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`The charts attached as Exhibits C-1 to C-9 identify items of prior art that anticipate the
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`Asserted Claims or that render the Asserted Claims obvious either alone or in combination with
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`one or more other items of prior art. Further, Defendants contend that each disclosed prior art item
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`can be combined with other disclosed prior art items when a particular prior art item lacks or does
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`not explicitly disclose an element or feature of an Asserted Claim.
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`Where Defendants cite to, reference, or discuss a particular figure in a prior-art reference,
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`the citation also should be understood to include the caption and description of the figure and any
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`text relating to the figure in addition to the figure itself. Conversely, where Defendants cite to,
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`reference or discuss the text in a prior-art reference, the citation also should be understood to
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`include any figures referenced by the cited text. Additional evidence and information regarding
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`the features and elements of the prior-art reference may be provided by witness testimony, or by
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`additional documents that describe the prior-art reference that are discovered through the course
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`of ongoing discovery. If any reference identified as anticipating is found not to teach, explicitly
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`or inherently, any element of any Asserted Claim, any such missing element would have been
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`obvious to one of ordinary skill in the art at the time of the alleged invention.
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`In rendering the Asserted Claims obvious, each prior-art reference identified or discussed
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`may be combined with: (1) information known to persons skilled in the art at the time of the alleged
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`invention, (2) any of the other anticipatory or obviousness prior-art references, (3) any statements
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`in the intrinsic record of the ’796 Patent and related applications, or (4) any of the additional prior
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`art identified below. Further, a person of skill in the art would have been motivated to combine
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`the preceding references for the following reasons. Teachings, suggestions, motivations and/or
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`reasons to modify any of the references and/or to combine any two or more of the references can
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`come from many sources, including the prior art (specific and as a whole), common knowledge,
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`common sense, predictability, expectations, industry trends, design incentives or need, market
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`demand or pressure, market forces, obviousness to try, the nature of the problem faced, and/or
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`knowledge possessed by a person of ordinary skill. Exemplary motivations to combine or modify
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`references are discussed below and in the attached Claim Charts. Defendants further reserve the
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`right to rely upon expert testimony addressing such motivations.
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`Although a patent claim may be invalidated based on a teaching-suggestion-motivation
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`(“TSM”) rationale—i.e., that some teaching, suggestion, or motivation in the prior art that would
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`have led one of ordinary skill to modify the prior-art reference or to combine prior-art reference
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`teachings to arrive at the claimed invention—the Supreme Court identified additional rationales in
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`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). The following of these rationales apply here:
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`(A) the asserted claims combine prior-art elements according to known methods
`to yield predictable results;
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`(B) the asserted claims involve the simple substitution of one known element for
`another to obtain predictable results;
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`(C) the asserted claims involve the use of a known technique to improve similar
`devices (methods, or products) in the same way;
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`(D) the asserted claims apply a known technique to a known device (method, or
`product) ready for improvement to yield predictable results;
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`(E) the asserted claims involve combinations of prior-art references that would
`have been “obvious to try”—a person of ordinary skill in the art could have
`reached the asserted claims by choosing from a finite number of identified,
`predictable solutions, with a reasonable expectation of success;
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`(F) the asserted claims are simply variations of work from one field of endeavor
`or a different one that would have been prompted based on design incentives or
`other market forces because the variations were predictable to one of ordinary
`skill in the art.
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`See KSR, 550 U.S. at 414–18 (rejecting the Federal Circuit’s “rigid” application of the teaching,
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`suggestion, or motivation to combine test, and instead espousing an “expansive and flexible”
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`approach); see also Department of Commerce, Patent and Trademark Office, Examination
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`Guidelines for Determining Obviousness Under 35 U.S.C. 103 in View of the Supreme Court
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`Decision in KSR International Co. v. Teleflex Inc., 72 Fed. Reg. 57,526 (Oct. 10, 2007). Indeed,
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`the Supreme Court held that a person of ordinary skill in the art is “a person of ordinary creativity,
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`not an automaton” and “in many cases a person of ordinary skill in the art will be able to fit the
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`teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 420-21.
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`Thus, even in the absence of a specific teaching, suggestion, or motivation to combine
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`prior-art references, the Asserted Claims are obvious and therefore invalid. Each of the cited
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`references or devices is in the same field making it obvious for someone of ordinary skill in the art
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`to identify and combine elements from these references and devices. Further, market pressures in
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`the electronics industry continually demand smaller imaging lenses with improved performance
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`capabilities and there are a limited number of predictable lens element configurations and
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`properties that will meet the requirements of mobile device manufacturers. Further, at the time of
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`the invention, the number of manufacturers of certain lens components for smaller lens systems
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`(e.g., lens sensors, among others) was limited, and the variance of configuration and/or placement
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`of such components was similarly limited to those manufacturer specifications. The lens element
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`configurations and properties claimed in the ’796 Patent were, at a minimum, obvious to try and
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`are the product of no more than ordinary skill, common sense, and application of well-known lens
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`design techniques and lens design software.
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`For instance, the prior art references that have been charted or are otherwise listed above
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`relate to lens systems. Many of these references describe the ’796 Patent’s lens structure, refractive
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`power and concavity/convexity. By at least the late 2000s, the effect of the refractive power and
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`concavity/convexity of each lens element was well known, and many inventors filed patent
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`applications predating the ’796 Patent. For example, the charted references disclose an image
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`capturing lens system with four lens elements, wherein: (1) the first lens element has a refractive
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`power; (2) the second lens element has a positive refractive power and a convex image-side surface
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`in a paraxial region; (3) the third lens element has a negative refractive power, a concave object-
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`side surface in a paraxial region, and a convex image-side surface in a paraxial region; and (4) the
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`fourth lens element is aspheric on both sides, has a refractive power, a concave image-side surface
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`in a paraxial region, and at least one convex shape in an off-axis region of the image-side.
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`Other prior art references also disclose lens systems with some or all of the lens structure(s),
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`refractive power(s), and concavity/convexity claimed in the ’796 Patent, without limitation. The
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`prior art includes a large number of examples of such lens systems. Thus, a person of ordinary
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`skill in the art at the time of filing of the ’796 Patent would have had reason to combine elements
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`of any of these and similar references. Further, a person of ordinary skill in the art would recognize
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`that the combination of any of these systems is a predictable use of lens elements as known in the
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`art to solve a known problem and use of known techniques of placing the lens elements in various
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`orders, shapes, and refractive powers to solve a known problem in the same way.
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`As another non-limiting example, many of the prior art references that have been charted
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`or are otherwise listed above describe approaches to designing lens systems to meet various field
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`of view specifications. By at least the late 2000s, the effect of altering the axial distance between
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`the object-side surface of the first lens element and the image-side surface of the fourth lens
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`element (“Td”) in four lens systems, were well known. Adjusting the Td directly adjusts the total
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`track length (“TTL”) many inventors filed patent applications predating the ’796 Patent and
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`disclose a variety of Td and TTL values and that selecting an appropriate TTL was a mere result
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`of routine experimentation or economic factors. Thus, a person of ordinary skill in the art at the
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`time of filing of the ’796 Patent would have had ample reason to vary the Td values to obtain
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`desired field of view values. Td would have been easily scalable by a person of ordinary skill in
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`the art using common lens design software such as ZEMAX, which has a “scale” function that
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`allows designers to easily scale various parameters including Td. One of skill in the art would
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`have recognized that modifying the Td parameter results in predictable outcomes and involves
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`nothing more than the application of routine skill, common sense, and well-known design
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`techniques to solve a known problem. In addition, design incentives and other market forces would
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`have prompted one of ordinary skill in the art to try the Td recited in the Asserted Claims of the
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`’796 Patent.
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`Further, a person of ordinary skill in the art at the time of the invention of the ’796 Patent,
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`would have known of and used standard lens design and optimization software, along with any
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`accompanying user manuals, for the optimization of lens design. See, e.g., Warren J. Smith,
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`Modern Lens Design 11 (2d ed. 2005). A person of ordinary skill in the art would understand that
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`many computerized optimization techniques were in common knowledge and use at the time of
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`the invention of the ’796 Patent to improve or change the design of a lens system. Exemplary prior
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`art techniques include splitting an element of a lens system, reversing a cemented doublet, inserting
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`a low-power meniscus element before or within a lens, flipping or reversing a meniscus element,
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`adding thickness to a positive power meniscus, adding an aspheric to a surface or removing it,
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`inserting or adding a disposable zero power aspheric element, making a large change in a
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`constructional parameter and freezing it for several optimization cycles then releasing it, changing
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`a chosen parameter in the direction of reducing the angles of incidence, systematically varying the
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`starting point for the optimization, modifying a merit function to severely target aberrations,
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`adding new rays and targets to a merit function to pressure aberrations identified as problems in
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`ray intercept plots, among others. See, e.g., Warren J. Smith, Modern Lens Design 47-49 (2d ed.
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`2005); see also Warren J. Smith, Modern Lens Design: A Resource Manual Chapter 3 (1992). One
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`having ordinary skill in the art would understand that any or all of such techniques could be
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`selected and/or performed during the process of designing a lens system. Further still, one having
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`ordinary skill in the art would understand that plastic lenses could be used in place of glass lenses
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`in commonly-known lens systems, for example to reduce the weight and/or increase the durability
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`of the overall system, and that techniques historically applicable to glass lens system may be used
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`with plastic lenses. See, e.g., Warren J. Smith, Modern Lens Design 215 (2d ed. 2005) (“a plastic,
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`aspheric triplet camera lens”).
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`Additionally, a person of ordinary skill in the art would have recognized that improvements
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`could be achieved by combining or modifying prior-art references that described such
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`improvements. Each of the prior-art references identified herein describes methods that were
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`known to offer such improvements, and, accordingly, one of skill in the art would have been
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`motivated to combine or modify the references as identified in each of the combinations. It also
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`would have been obvious to a person of ordinary skill in the art to try combinations of these
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`references with a reasonable expectation of success, and otherwise modify the prior art and their
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`combinations resulting in the Asserted Claims of the ’796 Patent. Further, these combinations and
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`yield predictable results, utilize known substitute lens designs and features, are based upon
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`performing simple substitution of one known element for another to obtain predictable results, and
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`are based on using known work in the field of optics to implement variations such as changing the
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`lens and lens assembly size or their optical properties and that of their lens assemblies as a whole.
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`The teachings, suggestions, and motivations discussed in the charted prior art references as
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`discussed, as well as the knowledge of a person of ordinary skill in the art, including the discussion
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`and knowledge regarding the use of lenses and lens assemblies in small electronic devices and
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`with digital cameras and sensors, reduced size of these lenses, lens assemblies, cameras, and
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`electronics devices over time, and of the optical properties of lenses and lens assemblies including
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`specific designs, also support that the Asserted Claims of the ’796 Patent are obvious.
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`III.
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`Patent Rule 3-3(d)
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`Following are the grounds upon which Defendants contend the Asserted Claims of the ’796
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`Patent are invalid for failure to meet the written description, enablement, and definiteness
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`requirements of 35 U.S.C. § 112, based on Defendants’ investigation to date and currently
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`available information. Defendants reserve the right to supplement and amend these Invalidity
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`Contentions based on further discovery and investigation including, in particular, the deposition
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`of any of the named inventor(s) of the ’796 Patent, the parties’ claim construction positions, and
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`further review and investigation of Largan’s infringement theories.
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`Lack of Written Description Under Post-AIA 35 U.S.C. § 112(a)
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`A.
`Each of the Asserted Claims is invalid for lack of written description. Among other
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`reasons, the written description of the ’796 Patent fails to show that the inventors were in
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`possession of each of the alleged inventions of the Asserted Claims, including of the different
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`geniuses, species, and embodiments that may be covered by the Asserted Claims. The Asserted
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`Claims purport to cover various different types of lenses, lens shapes, lens surfaces, refractive
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`powers, focal points and focal point ratios, radiuses of curvature, distances and distance
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`relationships, aperture stops, digital sensors and pixel areas, materials, Abbe numbers, fields of
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`view, and other claim limitations, as well as various relationships between and ranges of these
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`components, features, values, and claim limitations. However, the written description of the ’796
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`Patent fails to disclose that the inventors were in possession of each of the alleged inventions and
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`the full range of lenses and lens assemblies are allegedly covered and claimed by the Asserted
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`Claims—including purporting to cover lenses, lens assemblies, and embodiments that would not
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`provide an acceptable or desired image quality and/or may not be functional. The written
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`description of the ’796 Patent also does not discuss any specific digital sensors or cameras.
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`Moreover, the written description of the ’796 Patent does not disclose any specific problem being
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`addressed by the ’796 Patent, any specific solution or improvement of the ’796 Patent, or any other
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`indication that the inventors were in possession of the alleged inventions of the Asserted Claims.
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`Instead, the written description of the ’796 Patent purports to show that the inventors were in
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`possession, at most, of certain very specific lens and lens system embodiments, but not the all