UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`ABILITY OPTO-ELECTRONICS TECHNOLOGY CO., LTD,
`
`Petitioner,
`
`v.
`
`LARGAN PRECISION CO., LTD.,
`
`Patent Owner.
`__________________
`
`U.S. Patent No. 9,146,378
`
`Filing Date: December 2, 2013
`Issue Date: September 29, 2015
`
`Title: Image Capturing Lens Assembly, Image Capturing Device and Mobile
`Terminal
`__________________
`
`PETITION FOR INTER PARTES REVIEW
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`

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`TABLE OF CONTENTS
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`Page
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`Introduction ..................................................................................................... 1 
`I.
`The Examiner Did Not Fully Appreciate Matsuo’s Disclosures. ................... 2 
`II.
`III. The ’378 Patent ............................................................................................... 6 
`
`Prosecution History ............................................................................. 12 
`
`Person of Ordinary Skill ..................................................................... 15 
`IV. Standing ........................................................................................................ 15 
`V. Grounds ......................................................................................................... 15 
`VI. Claim Construction ....................................................................................... 16 
`VII. Prior Art ........................................................................................................ 16 
` U.S. Patent No. 6,970,306 (“Matsuo”) ............................................... 16 
` WO 2013/145989 A1 (“Kawasaki”) .................................................. 19 
`VIII. How the Challenged Claims are Unpatentable ............................................. 21 
` Ground 1: Matsuo Renders Claims 1–6, 8, 11, 13, and 15
`Obvious. ............................................................................................. 21 
`1.
`Claim 1 ..................................................................................... 22 
`2.
`Claim 2: “The image capturing lens assembly of claim 1,
`wherein the third lens element has the object-side surface
`being convex in a paraxial region thereof, and the object-
`side surface of the third lens element has at least one
`concave shape in an off-axis region thereof.” .......................... 37 
`Claim 3: “The image capturing lens assembly of claim 1,
`wherein the focal length of the second lens element is f2,
`the focal length of the third lens element is f3, and the
`following condition is satisfied: -1.5<f2/f3<0.” ...................... 39 
`Claim 4: “The image capturing lens assembly of claim 1,
`wherein the central thickness of the first lens element is
`CT1, the central thickness of the second lens element is
`CT2, and the following condition is satisfied:
`0.30<CT2/CT1<0.75.” ............................................................. 39 
`
`3.
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`4.
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`TABLE OF CONTENTS
`(continued)
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`Page
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`5.
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`6.
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`7.
`8.
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`9.
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`Claim 5: “The image capturing lens assembly of claim 1,
`wherein a maximal field of view of the image capturing
`lens assembly is FOV, and the following condition is
`satisfied: 76 degrees<FOV<120 degrees.” .............................. 40 
`Claim 6: “The image capturing lens assembly of claim 1,
`wherein an axial distance between the object-side surface
`of the first lens element and an image plane is TL, and
`the following condition is satisfied: 1.0 mm<TL<2.3
`mm.” ......................................................................................... 42 
`Claim 8: .................................................................................... 47 
`Claim 11: “The image capturing lens assembly of claim
`8, wherein a curvature radius of the object-side surface of
`the second lens element is R3, a curvature radius of the
`image-side surface of the second lens element is R4, and
`the following condition is satisfied: |(R3-
`R4)/(R3+R4)|<0.15.” ............................................................... 49 
`Claim 13: “The image capturing lens assembly of claim
`8, wherein a focal length of the image capturing lens
`assembly is f, an entrance pupil diameter of the image
`capturing lens assembly is EPD, and the following
`condition is satisfied: 1.60<f/EPD<2.45.” ............................... 50 
`10. Claim 15: “The image capturing lens assembly of claim
`8, wherein an axial distance between the object-side
`surface of the first lens element and an image plane is
`TL, half of a maximal field of view of the image
`capturing lens assembly is HFOV, and the following
`condition is satisfied: 1.0 mm<TL/tan(HFOV)<3.0 mm.” ...... 57 
` Ground 2: Kawasaki Renders Claims 1–6 Obvious. ......................... 59 
`1.
`Claim 1 ..................................................................................... 59 
`2.
`Claim 2 ..................................................................................... 75 
`3.
`Claim 3 ..................................................................................... 78 
`4.
`Claim 4 ..................................................................................... 78 
`5.
`Claim 5 ..................................................................................... 79 
`-ii-
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`TABLE OF CONTENTS
`(continued)
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`Page
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`6.
`Claim 6 ..................................................................................... 82 
`IX. Factors Counseling Against Discretionary Denial Under 35 U.S.C.
`§ 314(a) ......................................................................................................... 87 
`X. Mandatory Notices ........................................................................................ 88 
`
`Real Parties-in-Interest ....................................................................... 88 
`
`Related Matters ................................................................................... 88 
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`Service Information ............................................................................ 89 
`XI. Fees ............................................................................................................... 90 
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`-iii-
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`I. Introduction
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`Ability Opto-Electronics Technology Co., Ltd. requests review of claims 1–6,
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`8, 11, 13, and 15 of U.S. Patent No. 9,146,378. The ’378 patent discloses a lens
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`system for image capture, e.g., on a smartphone, comprising three lens elements. It
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`discloses well-known properties for the individual lens elements and provides lens
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`data in table format for eight embodiments. Nothing about the design of the
`
`individual lens elements was new at the time. The three-lens lens assembly was also
`
`not new. All of the features of independent claims 1 and 8, as well as dependent
`
`claims 2, 3, 4, and 11, are disclosed by Matsuo, which was filed almost a decade
`
`before the ’378 patent. And the remainder of the challenged claims would have
`
`been obvious to a POSITA through routine and obvious design modifications to
`
`Matsuo and Kawasaki that are common when adjusting prior lens designs to meet
`
`the design requirements of a new design project.
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`Although the Examiner considered the published Matsuo application during
`
`prosecution of the ’378 patent, the Examiner overlooked or misapprehended
`
`Matsuo’s example 14 and did not have the benefit of lens design software that
`
`allows a person of ordinary skill to model the lens designs disclosed in the prior art.
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`As shown below, Matsuo’s example 14 explicitly discloses the conditional
`
`expressions that the Examiner thought were missing, and lens design software
`
`allows different embodiments disclosed in the prior art to be simulated and verified.
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`The software also allows obvious design modifications to be simulated and verified.
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`Because the Examiner materially erred in analyzing Matsuo, and because this
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`Petition presents new evidence and art not before the Examiner that shows that the
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`challenged claims are unpatentable, trial should be instituted and the challenged
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`claims should be cancelled.
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`II. The Examiner Did Not Fully Appreciate Matsuo’s Disclosures.
`
`The Examiner recognized that Matsuo and the other prior art of record
`
`during prosecution disclosed all the features of independent claims 1 and 8,
`
`including the claimed positive-positive-negative refractive power structure, but the
`
`Examiner allowed the claims to issue because he determined that the prior art did
`
`not simultaneously disclose all of the recited conditional expressions. Ex.1002,
`
`265–67, 795. Specifically, the Examiner said:
`
`Although the prior art teaches an image capturing lens assembly, an
`imaging capturing device comprising such an image capturing lens
`system, and a mobile terminal comprising such an image capturing
`lens assembly, wherein the lens assembly comprises, in order from an
`object side to an image side: a first lens element with positive
`refractive power having a convex object-side surface and a convex
`image-side surface, wherein the object-side surface and the image-
`side surface of the first lens element are aspheric; a second lens
`element with positive refractive power having a concave object-side
`surface and a convex image-side surface, wherein the object-side
`
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`-2-
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`surface and the image-side surface of the second lens element are
`aspheric; and a third lens element with negative refractive power
`having a concave image-side surface in a paraxial region thereof,
`wherein the image-side surface of the third lens element has at least
`one convex shape in an off-axis region thereof, and an object-side
`surface and the image-side surface of the third lens element are
`aspheric; wherein the image capturing lens assembly has a total of
`three lens elements with refractive power and further includes a stop
`disposed between the first lens element and the second lens element,
`the prior art fails to teach such an image capturing lens assembly
`simultaneously satisfying the conditional expressions as claimed and
`defined in independent claims 1, 8, 16, 23 and 24.
`
`Id., 265–66 (emphasis added). But as described further herein, the Examiner
`
`overlooked Matsuo’s example 14, which explicitly discloses all of the conditional
`
`expressions recited in independent claims 1 and 8.
`
`Claim 1’s conditional expressions are recited in Element 1e (see Section
`
`VIII.A.1(f)). Element 1e recites that the “focal length of the second lens element
`
`… f2” divided by the “focal length of the third lens element … f3” must satisfy the
`
`condition “-3.0<f2/f3<0.” Ex.1001, 24:60–62, 25:2–5. Matsuo’s Table 7 discloses
`
`that example 14 satisfies this condition because f2/f3 equals -0.57. Ex.1003,
`
`14:49–51, Table 7; Ex.1005 ¶ 107.
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`-3-
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`Element 1e recites that the “axial distance between the stop and the image-
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`side surface of the third lens element … SD” divided by the “axial distance between
`
`the object-side surface of the first lens element and the image-side surface of the
`
`third lens element … TD” must satisfy the condition “0.58<SD/TD<0.82.”
`
`Ex.1001, 24:62–66, 25:2–7. Section VIII.A.1(f) explains that SD equals 2.652 mm,
`
`TD equals 4.233 mm, and SD/TD equals 0.627 in Matsuo’s example 14. Ex.1003,
`
`4:17–18, 11:40–41, Table 5; Ex.1005 ¶ 104. Thus, Matsuo’s example 14 also
`
`satisfies this condition. Ex.1005 ¶ 104.
`
`Element 1e recites that the “central thickness of the second lens element …
`
`CT2” divided by the “central thickness of the first lens element … CT1” must
`
`satisfy the condition “0.20<CT2/CT1<0.85.” Ex.1001, 24:66-25:9. Matsuo’s Table
`
`5 discloses that CT2 equals 0.800 mm and CT1 equals 1.581 mm in example 14.
`
`Ex.1003, Table 5; Ex.1005 ¶ 105. Thus, CT2/CT1 equals 0.506 in Matsuo’s
`
`example 14, which satisfies this condition. Ex.1005 ¶ 105.
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`-4-
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`The last condition recited in Element 1e is that the “focal length of the image
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`capturing lens assembly … f” divided by the “entrance pupil diameter of the image
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`capturing lens assembly … EPD” must satisfy the condition “1.20<f/EPD<2.80.”
`
`Ex.1001, 24:59–60, 25:1–10. Section VIII.A.1(f) explains that f/EPD equals the f-
`
`number (Fno) in Matsuo’s example 14, and Matsuo’s Table 7 discloses that example
`
`14’s Fno is 2.77, which satisfies this final condition. Ex.1003, 4:17–18, Table 7;
`
`Ex.1005 ¶ 108. Section VIII.A.7(f) explains that Matsuo’s example 14 explicitly
`
`discloses claim 8’s conditional expressions as well.
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`-5-
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`ZEMAX simulation data illustrating that Matsuo’s example 14 configuration
`
`produces a working lens assembly is submitted herewith as confirmation evidence.
`
`Because the conditional expressions that the Examiner thought were missing from
`
`Matsuo actually are present in that prior art reference, an inter partes review trial
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`should be instituted. See, e.g., Advanced Bionics, LLC v. MED-EL
`
`Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, at 8, 8 n.9 (PTAB
`
`Feb. 13, 2020) (“An example of a material error may include misapprehending or
`
`overlooking specific teachings of the relevant prior art where those teaching impact
`
`patentability of the challenged claims.”).
`
`III. The ’378 Patent
`
`The ’378 patent “relates to an image capturing lens assembly, image capturing
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`device and mobile.” Ex.1001, 1:14–15. It recites that “the popularity of mobile
`
`products having camera functionalities” and reductions in “the pixel size of sensors”
`
`has increased demand for smaller optical systems. Id., 1:20–30. It acknowledges
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`that optical systems with a “three-element lens structure” were “conventional,” but
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`criticizes those systems by asserting that “the image scene tends to be confined” by
`
`the conventional positive-negative-positive refractive power arrangement of lens
`
`elements and front aperture stop. Id., 1:31–37. The ’378 patent also criticizes the
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`conventional design as “not favorable for making a good balance between enlarging
`
`the field of view and reducing the total track length.” Id., 1:37–39.
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`-6-
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`The ’378 patent’s lens assembly comprises three lens elements. Id., 1:43–46.
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`It is described with reference to the object side (to the left) and image side (to the
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`right). In order from the object side to the image side, the lens elements are
`
`designated first, second, and third. Id. The first lens element 110, second lens
`
`element 120, and third lens element 130 are shown in Fig. 1. Id., 7:54–55, 7:61–
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`8:16. Fig. 1 also shows an aperture stop 100, IR-cut filter 140, and image plane 150.
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`Id., 7:61–67.
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`One property of lenses is their refractive power, which can be positive or
`
`negative. A lens with positive refractive power causes light entering the lens to
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`converge upon its central axis and is thicker near its central axis. Ex.1005 ¶ 33. A
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`-7-
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`lens with negative refractive power causes light entering the lens to spread through a
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`wider angle and is thinner near its central axis. Id. The ’378 patent discloses that
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`“[t]he first lens element [has] positive refractive power.” Ex.1001, 1:46–47. “The
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`second lens element” also has “positive refractive power.” Id., 1:50. “The third lens
`
`element [has] negative refractive power.” Id., 1:53–54.
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`A lens has two surfaces, an object-side surface (left) and an image-side
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`surface (right). A lens surface can be convex or concave. A convex surface
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`protrudes outward, and a concave surface protrudes inward. Ex.1005 ¶ 34. By
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`convention, this property is defined by the shape of the lens surface near its central
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`axis, i.e., “in the paraxial region” in the language of the ’378 patent. Id. The ’378
`
`patent discloses that “[t]he first lens element … has a convex object-side surface and
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`a convex image-side surface,” and “[t]he second lens element … has a concave
`
`object-side surface and a convex image-side surface.” Ex.1001, 2:16–23. Fig. 1
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`shows these respective surfaces 111, 112, 121, and 122. Id., 8:1–8. “The third lens
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`element … has a convex object-side surface and a concave image-side surface in a
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`paraxial region,” and its image-side surface “has at least one convex shape in an off-
`
`axis region.” Id., 2:23–29. Fig. 1 also shows these respective surfaces 131 and 132.
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`Id., 8:9–16.
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`For each embodiment, the ’378 patent provides a table of “detailed optical
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`data.” E.g., id., 9:44–45 (Table 1). The first column identifies the surface number.
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`Ex.1005 ¶ 35. As indicated by the associated labels, some surfaces are lenses, while
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`others indicate the object (0), aperture stop (3), IR-cut filter (8), and image plane
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`(10). Id. The numbering begins with the object (0) and increases from left to right
`
`(object side to image side), ending with the image plane (10). Id. The second
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`column lists surface curvature radii. Id. For the non-lens surfaces (0, 3, 8–10),
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`“Plano” denotes a flat surface. Id. Each lens surface (1–2, 4–7) has an associated
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`curvature radius in millimeters. Id.
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`A radius is positive if its center is to the right of the surface and negative if its
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`center is to the left of the surface. Id. ¶ 36. For an object-side (left) surface, this
`
`means that a positive radius denotes a convex surface that protrudes outward to the
`
`left and a negative radius denotes a concave surface that protrudes inward to the
`
`right. Id. For an image-side (right) surface, this means that a positive radius denotes
`
`a concave surface that protrudes inward to the left and a negative radius denotes a
`
`convex surface protrudes outward to the right. Id.
`
`For example, the ’378 patent discloses that “[t]he second lens element 120 …
`
`has a concave object-side surface 121 and a convex image-side surface 122.”
`
`Ex.1001, 8:5–7. Both surfaces (4, 5) have a negative radius. Id., Table 1. Table 1
`
`confirms the ’378 patent’s text because a negative radius denotes a concave object-
`
`side surface and convex image-side surface. Ex.1005 ¶ 37.
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`-10-
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`Other values specified in the optical-data tables include thickness, material,
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`refractive index, Abbe number, and focal length. E.g., Ex.1001, Table 1. The
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`thickness for a lens surface specifies either the thickness of the lens at its center if
`
`specified for the object-side surface or the distance from the image-side surface of a
`
`lens to the next surface. For example, the second lens in Table 1 comprises object-
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`side surface 4 and image-side surface 5. Id. The thickness of 0.224 mm for surface
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`4 means the second lens is 0.224 mm thick at the center, and the thickness of 0.032
`
`mm for surface 5 means that there is a space of 0.032 mm from the center of the
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`image-side surface of the second lens to the object-side surface of the third lens. Id.;
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`Ex.1005 ¶ 38. The 0.288 mm thickness of the aperture stop (3) denotes the space
`
`between the aperture stop and the object-side surface of the second lens. Ex.1001,
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`Table 1; Ex.1005 ¶ 38. The material column indicates if a lens is made of glass or
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`plastic; the index column provides the refractive index for a lens, which describes
`
`how fast light travels through the material; the Abbe number is a measure of how the
`
`material’s refractive index changes with the wavelength of light; and the focal length
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`is a measure of how strongly the lens converges (positive) or diverges (negative)
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`light. Ex.1005 ¶ 38.
`
`The ’378 patent also describes certain lenses as aspheric. A spherical lens has
`
`a surface in the shape of the surface of a sphere; an aspherical lens is non-spherical.
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`Id. ¶ 39. The ’378 patent includes the following “equation of the aspheric surface
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`-11-
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`profiles” and includes a table for each embodiment showing “the aspheric surface
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`data,” which, along with the curvature radius, defines the shape of the lens surface:
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`
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`Id.; Ex.1001, 8:22–39, 9:45–46, Tables 2, 4, 6, 8, 10, 12, 14, 16.
`
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`Prosecution History
`U.S. Patent Application No. 14/094,478 was filed on December 2, 2013,
`
`claiming priority to Taiwan Application No. 102137700. Ex.1001, [21], [22];
`
`Ex.1002, 1, 5. The claims were allowed in an initial office action without rejection.
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`Ex.1002, 260–67. The Examiner reviewed U.S. Patent Application Publication No.
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`2005/0041306, which issued as the Matsuo patent discussed in this Petition. Id.;
`
`Ex.1003, [65]. The Examiner stated that the prior art of record disclosed all the
`
`features of the independent claims except it did not simultaneously disclose all of the
`
`recited conditional expressions. Ex.1002, 265–67. The Examiner did not provide
`
`any substantive analysis of Matsuo.
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`The applicants then filed a request for continued examination with
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`amendments to claim 16 and cancelation of claim 18. Id., 287–301. Subsequently,
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`the Examiner rejected claims 23 and 24 as anticipated by Kwon (WO 2013/048089).
`
`Id., 750–56. The applicants then made substantial amendments to claims 23 and 24.
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`Id., 771–87.
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`Referring back to the earlier notice of allowance, the Examiner then allowed
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`claims 1–17 and 19–24, which correlate to claims 1–17 and 18–23 in the ’378
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`patent. Id., 792–96. Prior to the amendments above, claims 23 and 24 recited
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`similar limitations as claims 1 and 8. Ex.1005 ¶ 43.
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`Person of Ordinary Skill
`The ’378 patent’s earliest claimed priority date is October 18, 2013. Ex.1001,
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`1:7–9. A person of ordinary skill in the art (“POSITA”) as of October 18, 2013,
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`would have had a bachelor’s degree in optical engineering, mechanical engineering,
`
`electrical engineering, optics, or physics with at least three years of experience
`
`working in optical engineering; a master’s degree in one of the above disciplines
`
`with at least two years of experience working in optical engineering; a Ph.D. in one
`
`of the above disciplines focusing on optical engineering; or equivalent experience.
`
`Ex.1005 ¶ 64.
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`IV. Standing
`
`Ability certifies that the ’378 patent is available for IPR and Ability is not
`
`barred or estopped from requesting IPR of the challenged claims on the identified
`
`grounds. This Petition is being filed within one year of the October 8, 2019 service
`
`of Largan’s Complaint upon Petitioner in Largan Precision Co. Ltd. v. Ability Opto-
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`Electronics Tech. Co. Ltd., No. 4:19-cv-00696-ALM (E.D. Tex.).
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`V. Grounds
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`Ability requests review and cancellation of the challenged claims on the
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`following grounds:
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`Ground
`Ground 1
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`Ground 2
`
`Claims
`1–6, 8, 11, 13, and
`15
`1–6
`
`Basis
`35 U.S.C. § 103 based on U.S. Patent No.
`6,970,306 (“Matsuo”)
`35 U.S.C. § 103 based on WO 2013/145989 A1
`(“Kawasaki”)
`
`The ’378 patent is subject to the first-inventor-to-file provisions of 35 U.S.C.
`
`§§ 102, 103. Matsuo was filed on January 20, 2004, and issued on November 29,
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`2005. Matsuo is prior art pursuant to 35 U.S.C. § 102(a)(1). Kawasaki was
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`published on October 3, 2013, filed on February 23, 2013, and is prior art under 35
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`U.S.C. § 102(a)(1).
`
`VI. Claim Construction
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`The Board gives claims their ordinary and customary meaning, or “the
`
`meaning that the term would have to a [POSITA] at the time of invention.” Phillips
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`v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). At this time,
`
`Ability proposes no terms for construction, but Ability reserves the right to respond
`
`to any constructions proposed by Largan. Ability does not waive, and expressly
`
`reserves, the claim scope arguments, constructions, and evidence it may raise in
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`other proceedings.
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`VII. Prior Art
` U.S. Patent No. 6,970,306 (“Matsuo”)
`Matsuo discloses a lens system comprising three lens elements and an
`
`aperture stop. Ex.1003, 2:47–53. Matsuo’s lens system comprises “in order from an
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`-16-
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`object side, a positive first lens with a convex surface facing the object side, an
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`aperture stop that is provided on the object side or an image side of the first lens, a
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`meniscus second lens with a concave surface facing the object side, and a meniscus
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`third lens with a convex surface facing the object side.” Id. The first, second, and
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`third lenses are numbers 2, 3, and 4 respectively in Matsuo. Id., 4:10–12. Matsuo
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`discloses that, “although the first lens 2 is a positive lens, there is versatility in the
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`combination of the second lens and the third lens.” Id., 4:31–33. “[T]he preferable
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`structure is the structure of positive-negative-positive or positive-positive-negative”
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`refractive powers. Id., 4:45–47. Matsuo’s example 14, which is the focus of this
`
`Petition, is an “example[] of the structure of positive-positive-negative” refractive
`
`powers. Id., 13:48–49.
`
`Matsuo discloses that “the first lens 2 is a biconvex shape” and that it “may be
`
`a biaspheric lens.” Id., 2:61–63, 5:1–3. The second lens 3 preferably has a convex
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`image-side surface “irrespective of the positive and negative nature of the second
`
`lens 3” and it “may be a biaspheric lens.” Id. 2:61–63, 5:12–15. “[T]he third lens 4
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`is a biaspheric lens.” Id. 5:24.
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`Matsuo’s Figs. 1 and 12 show examples 1 and 14, respectively. Id., 3:44–45,
`
`3:56. Fig. 1 shows the stop 1, first lens 2, second lens 3, third lens 4, and imaging
`
`element 5. Id., 4:4–16. These numbers apply to Matsuo’s example 14 as well, but
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`-17-
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`they are not written out on Matsuo’s Fig. 12. Ex.1005 ¶ 70. The annotated version
`
`of Fig. 12 below includes the labels from Fig. 1. Id.
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`
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`
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`For each of Matsuo’s fifteen examples, Matsuo provides tables (1, 3, 5) listing
`
`the surface numbers, radius of curvature, distance, refractive index, and Abbe
`
`number. Ex.1003, 7:11–8:3, 9:19–20, 11:40–41. Matsuo’s Table 7 lists “the
`
`relationships of focal length and each parameter regarding examples 1 through 15.”
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`-18-
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`Id., 13:52–54. Matsuo also provides tables (2, 4, 6) that list the aspheric coefficients
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`for all fifteen examples. Id., 8:4–23, 10:40–41, 12:66–67.
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` WO 2013/145989 A1 (“Kawasaki”)
`Kawasaki “relates to an imaging lens suitable for an imaging device using a
`
`solid-state imaging element,” which has “a three-lens configuration.” Ex.1006
`
`¶¶ 0001, 0003. Kawasaki’s imaging lens “comprises, in order from the object side, a
`
`first lens L1, an aperture stop S, a second lens L2, and a third lens L3.” Id. ¶ 0056.
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`Kawasaki’s “first lens L1 is a positive lens with a convex object-side face.”
`
`Id. Kawasaki’s “second lens L2 is a positive meniscus lens with a concave object-
`
`side face.” Id. Kawasaki’s “third lens L3 is a negative lens with an image-side face
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`which is concave near the optical axis, has an inflection point within an effective
`
`radius, and is an aspheric face which becomes a convex face at the periphery of the
`
`lens.” Id. Kawasaki’s Fig. 4 “is a cross-sectional view of a lens of Embodiment 1.”
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`Id.
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`-19-
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`Kawasaki’s Table 1 lists the surface, radius of curvature, distance, refractive
`
`index, Abbe number, and effective diameter of the lenses in Kawasaki’s
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`Embodiment 1. Id. ¶ 0057; Ex.1005 ¶ 75. It also lists the focal lengths for each lens
`
`element and other system information, including the Fno (f-number) and total length
`
`of Kawasaki’s Embodiment 1. Ex.1006 ¶ 0057; Ex.1005 ¶ 75. It also lists the
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`aspheric surface coefficients for Embodiment 1. Ex.1006 ¶ 0057.
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`-20-
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`VIII. How the Challenged Claims are Unpatentable
`
`The following demonstrates where each element of the challenged claims is
`
`found in the prior art for each of the above-listed grounds.
`
` Ground 1: Matsuo Renders Claims 1–6, 8, 11, 13, and 15
`Obvious.
`The analysis below focuses on Matsuo’s example 14.
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`-21-
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`1.
`
`Claim 1
`(a) Preamble: “An image capturing lens assembly
`comprising, in order from an object side to an image
`side:”
`Matsuo discloses a lens system comprising an aperture stop 1, a first lens 2, a
`
`second lens 3, a third lens 4, an imaging element 5, and an optional “[c]over glass or
`
`a low pass filter … between the third lens 4 and the imaging element 5.” Ex.1003,
`
`2:47–53, 4:6–27. Fig. 12 “is an optical sectional view of an example 14.” Id., 3:56.
`
`Below, Fig. 12 is annotated to show the labels from Fig. 1, which also apply to Fig.
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`12. Ex.1005 ¶ 78. To the extent the preamble is limiting, Matsuo’s lens system is
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`“[a]n image capturing lens assembly.” Id. ¶¶ 76–79.
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`-22-
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`(b) Element 1a: “a first lens element with positive
`refractive power having a convex object-side surface
`and a convex image-side surface, wherein the object-
`side surface and the image-side surface of the first
`lens element are aspheric;”
`In order from the object side to the image side, Matsuo’s lens system
`
`comprises first “a positive first lens with a convex surface facing the object side.”
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`Ex.1003, 2:47–49. A “positive … lens” is a lens with positive refractive power.
`
`Ex.1005 ¶ 81. The “first lens 2 is a biconvex shape,” i.e., both the object- and
`
`image-side are convex. Id.; Ex.1003, 5:1–3. Fig. 12 shows that the first lens in
`
`Matsuo’s example 14 has convex object- and image-side surfaces because both
`
`surfaces protrude outwards. Ex.1005 ¶ 81. The positive radius of curvature for the
`
`object-side surface (R1) and the negative radius of curvature for the image-side
`
`surface (R2) of the first lens in Matsuo’s Table 5 (example 14) confirm that both
`
`surfaces are convex. Id. ¶ 82; Ex.1003, Table 5. The biconvex shape of the first
`
`lens in Matsuo’s example 14 confirms that it has positive refractive power, because
`
`it is thicker in the center. Ex.1005 ¶ 82.
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`-23-
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`Matsuo discloses that “the first lens … may be a biaspheric lens,” which
`
`means both sides are aspheric. Ex.1003, 2:61–63; Ex.1005 ¶ 83. Matsuo’s Table 6
`
`lists aspheric coefficients for the aspheric surface formula (Formula 1) for both
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`-24-
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`

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`surfaces of the first lens,1 confirming that both surfaces are aspheric in example 14.
`
`Ex.1003, 8:5–23, Table 6; Ex.1005 ¶ 83.
`
`Matsuo’s first lens is the recited “first lens element.” Ex.1005 ¶¶ 80–85.
`
`
`
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`1 A certificate of correction dated February 27, 2007, changed coefficient A4 for
`
`example 14’s surface number 2 in Table 6 from -7.8619E-03 to -7.8916E-03.
`
`Ex.1003, Certificate of Correction. Ex.1005 ¶ 84.
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`
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`-25-
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`

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`(c) Element 1b: “a second lens element with positive
`refractive power having a concave object-side surface
`and a convex image-side surface, wherein the object-
`side surface and the image-side surface of the second
`lens element are aspheric; and”
`After the first lens, from the object side to image side in Matsuo’s lens
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`system, is “a meniscus second lens with a concave surface facing the object side.”
`
`Ex.1003, 2:51–52. Matsuo discloses that “there is versatility in the combination of
`
`the second and third lens” and that the second lens can have positive or negative
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`refractive power. Id., 4:31–33, 4:45–47; Ex.1005 ¶ 87. In Matsuo’s example 14, the
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`refractive power of the lenses is “positive-positive-negative”; thus, the second lens
`
`has positive refractive power. Ex.1003, 13:48–49; Ex.1005 ¶ 87. A meniscus-
`
`shaped lens has a convex surface on one side and a concave surface on the opposite
`
`side, so the image-side surface of the second lens is convex. Ex.1005 ¶ 87.
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`The negative radii for the object- (R3) and image-side (R4) surfaces of the
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`second lens in example 14 confirm that the object-side surface is concave and the
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`image-side surface is convex. Id. ¶ 88; Ex.1003, Table 5. Matsuo’s Fig. 12
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`(example 14) confirms that the object-side surface of the second lens 3 is concave
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`because it protrudes inward and that the image-side surface is convex because it
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`protrudes outward. Ex.1005 ¶ 88.
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`-26-
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`FIG.12
`
`Object
`
`Image
`
`
`
`TABLE 5-00nlinued
`
`distance
`
`refractive index
`
`dispersion
`
`111
`
`112
`
`n3
`
`H4
`115
`
`1'11
`
`113
`114
`
`:11
`
`:12
`
`(13
`
`(14
`:15
`
`:16
`
`d?
`
`(18
`
`d0
`
`:11
`
`(12
`
`:13
`
`:14
`
`:15
`
`d6
`
`d?
`
`(18
`
`1.381
`
`0.588
`
`0.800
`
`0.100
`1.200
`
`0.826
`
`0.550
`
`0.500
`
`0.536
`
`1.581
`
`0.501
`
`0.800
`
`0.152
`
`1.1515I
`
`0.39?
`
`0.550
`
`0.500
`
`1.606
`
`1.935
`
`1.606
`
`glass
`
`glass
`
`v1
`
`a"!
`
`v3
`
`v4
`v5
`
`v]
`
`“10.
`
`v3
`
`W.
`
`vs
`
`65 .5
`
`209
`
`65.5
`
`81.6
`
`29.9
`
`29.9
`
`
`
`R1
`
`R2
`
`R3
`
`R4
`R5
`
`R6
`
`R?
`
`R8
`
`2.490
`
`-113.23?
`
`—1.452
`
`—2.31?
`1.669
`
`2.168
`
`0.000
`
`0.000
`
`'J'I-l-‘h'J—IIQH
`005-1105
`
`2
`
`