Corephotonics, Ltd.

Patent Trials and Appeals Board

Dec 6, 2021

IPR2020-00897 (P.T.A.B. Dec. 6, 2021)

Trials@uspto.gov Paper 34
571-272-7822 Entered: December 6, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APPLE INC.,
Petitioner,
v.
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
2
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 inter partes review on December
8, 2020. Paper 8 (“Inst. Dec.”). Patent Owner filed a Response (Paper 15,
“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
September 8, 2021, and a transcript is of record. Paper 33 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 314. Upon considering the
record, for reasons discussed below, we find claims 1–24 unpatentable.

II. BACKGROUND
A. Real Parties in Interest
The real 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 found related to a previously filed case in the Northern
District of California between the same parties, Case No. 17-cv-06457
(N.D.Cal.). See ’2555 case, Dkt. 14; ’4809 case, Dkt. 16.
Petitioner further advises us of two inter partes review proceedings
between these same parties, IPR2018-01140 (“’1140 IPR”) and IPR2018-
IPR2020-00897
Patent 10,324,277 B2
3
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”). 1, 2
Pet. 8, fn.2.
We identify 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 Guide3 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 claims priority to
Application No. 15/170,472 (now the ’712 patent), which claims
priority to Application No. 14/932,319 (now the ’032 patent), which
claims priority to Application No. 14/367,924 (abandoned), which
claims priority to PCT/IB2014/062465, which claims priority to Prov.
No. 61/842,987.
With respect to AIA trial proceedings, we note the following:
IPR2020-00896 (challenges the ’647 patent);

1 The ’277 patent is a continuation-in-part of the ’712 patent which is a
continuation of the ’032 patent. Ex. 1001, at [63].
2 The ’1140 and ’1146 IPRs have both terminated in final written decisions
relating to certain claims of the challenged patents. ’1140 IPR, Paper 37
(claims 1, 13, 14, and 15 shown unpatentable); ’1146 IPR, Paper 37 (claims
15–17 shown unpatentable). Patent 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.
IPR2020-00897
Patent 10,324,277 B2
4
IPR2020-00878 (challenges the ’897 patent);
IPR2019-00030 (challenges the ’568 patent);4
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 November 19, 2017. Ex.
1001, at [22]. A provisional application No. 61/842,987 was filed July 4,
2013.5 Id. at [60].
1. Technology
The ’277 patent describes and claims an optical lens system used in a
portable electronic product such as a cell phone. Ex. 1001, 1:24–29. A long
effective focal length (EFL) relative to a short total track length (TTL) of the
lens assembly enables good quality images. Id. at 1:31–45. The latest lens
designs use five lenses but the TTL/EFL ratio is larger than desired. Id. at
1:41–45.

4 The ’030 IPR terminated in 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).
5 Because the effective filing date of this patent is March 16, 2013, or later,
AIA § 103 applies to this proceeding. Ex. 1001, at [52], [60].
IPR2020-00897
Patent 10,324,277 B2
5
2. ’277 Patent
Figure 1A of the ’277 patent is reproduced below.

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 of a
specific refractive power and shape. Id. at 3:19–44. An “image sensor (not
shown) is disposed at image plane 114 for the image formation.” Id. at
3:44–46.
Each of the five lenses of this embodiment has refractive powers and
shapes shown in Figure 1A and further specified as follows:
first lens 102 has a positive refractive power and a convex object-
side surface and a concave image side surface (Ex. 1001, 3:26–
28);

second lens 104 has a negative refractive power of and a
meniscus convex object-side surface (Id. at 3:28–31);

IPR2020-00897
Patent 10,324,277 B2
6
third lens 106 has a negative refractive power a concave object-
side surface and a concave image-side surface (Id. at 3:31–33);

fourth lens 108 has a positive refractive power and a positive
meniscus with a concave object-side (Id. at 3:34–38); and

fifth lens 110 has a negative refractive power having a negative
meniscus, with a concave object-side surface (Id. at 3:38–41).

D. Illustrative Claim
All claims of the ’277 patent, 1 through 24, are challenged. Pet. 9.
Claims 1, 11, and 18 are independent apparatus claims to “a lens assembly.”
Ex. 1001, 8:21–10:46. The remaining claims 2–10, 12–17, and 19–24 all
depend directly or indirectly from one of the independent claims. Claim 1 is
reproduced below as illustrative.
[1.0]6 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 window positioned between the plurality of lens elements and
an image plane has a total track length (TTL) of 6.5 millimeters
or less,

[1.4] wherein a ratio TTL/EFL is less than 1.0,

6 Each claim and its 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.
IPR2020-00897
Patent 10,324,277 B2
7
[1.5] wherein the plurality of lens elements comprises, in order
from an object side to an image side, a first lens element with
positive refractive power,

[1.6] a second lens element with negative refractive power,

[1.7] and a third lens element,

[1.8] wherein a focal length f1 of the first lens element is 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)7: Ogino et al., US 9,128,267 B2, filed Mar. 29,
2013, issued Sept. 8, 2015.
Bareau (Ex. 1012)8: Bareau et al., “The Optics of Miniature 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 Sasián, PhD under
37 C.F.R. § 1.68 (“Sasián Dec.”, Ex. 1003) and the Declaration of José

7 Petitioner alleges Ogino “was filed on March 26, 2014 and claims priority
to Japanese Application No. 2013-072282 filed on March 29, 2013.” Pet. 9.
Thus, Petitioner alleges Ogino is prior art under 35 U.S.C. §102(a)(2) as of
its Japanese filing date. Id. On this record, we find that Ogino is prior art.
8 Petitioner alleges Bareau “was both presented publicly and published in
2006 [Ex. 1003 ¶ 50] and is prior art under §102(a)(1).” Pet. 9. On this
record, we find that Bareau is prior art.
IPR2020-00897
Patent 10,324,277 B2
8
Sasián, PhD under 37 C.F.R. § 1.68 in Support of Petitioner Reply (“Sasián
Reply Dec.,” Ex. 1037).
Patent Owner relies, 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. §9 Reference(s)/Basis
1–3, 5–8 103 Ogino Example 4,10 Bareau
1–24 103 Ogino Example 5, Bareau

III. ANALYSIS
A. Level of Ordinary Skill in the Art
Petitioner alleges a person having ordinary skill in the art would have
had “(i) a bachelor’s degree in Physics, Optical Sciences, or equivalent
training, as well as (ii) approximately three years of experience in designing
multi-lens optical systems.” Pet. 7 (citing Ex. 1003, 1111). Petitioner further
alleges a person of ordinary skill “would have known how to use lens design
software such as Code V, Oslo, or Zemax, and would have taken a lens

9 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 and 5, but also cites Example 6.
See, e.g., Pet. 27. We consider all cited portions of Ogino.
11 Petitioner alternates its citations to the Sasián 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.
IPR2020-00897
Patent 10,324,277 B2
9
design course.” Id. (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 relevant to our findings, we adopt Petitioner’s proposal which is
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 accorded a filing date of
May 4, 2020 (Paper 7), and the district court construction standard applies.
1. “effective focal length” and “total track length”
As Petitioner alleges, we construed “effective focal length” (EFL”)
and “total track length” (“TTL”)12 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

12 We also noted in the Institution Decision that Petitioner proposed a
different construction of TTL in IPR2020-00877 (“’877 IPR”), which
involves the same parties. Inst. Dec. 11. The parties were advised to
“address during trial whether and why the construction of this term should
differ.” Id. Neither party did so.

IPR2020-00897
Patent 10,324,277 B2
10
length” is “the length of the optical axis spacing between the object-side
surface of the first lens element and one of: an electronic sensor, a film
sensor, and an image plane corresponding to 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 ’1140 and ’1146 IPRs share common subject
matter with the ’277 patent. See Section II.B above.
Neither party disputes the constructions of EFL and TTL from the
’1140 or ’1146 IPRs as set 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 words of the 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 obvious if the differences between the
claimed invention and the prior art are “such that the claimed invention as a
whole would have been obvious before 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 obviousness is 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
IPR2020-00897
Patent 10,324,277 B2
11
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 of record, to support the legal
conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
1364, 1380 (Fed. Cir. 2016). Furthermore, in assessing the prior art, the
Board must consider whether a person of ordinary skill would have been
motivated to combine the prior art to achieve the claimed invention.
Nuvasive, 842 F.3d at 1381.
As the 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),
“because inventions in most, if not all, instances rely upon
building blocks long since uncovered, and claimed discoveries
almost of necessity will be combinations of what, in some sense,
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 Owner argues all claims of the ’277 patent remain patentable
over all of Petitioner’s asserted grounds of unpatentability. PO Resp. 23–30
IPR2020-00897
Patent 10,324,277 B2
12
(first ground), 40–54 (second ground);13 Sur-Reply 4; see Sections III.E and
F below. Patent Owner argues Petitioner’s unpatentability analysis is
“incomplete and ignores how a [person of ordinary skill in the art] would
have designed an optical lens assembly.” PO Resp. 23–30 (citing Ex. 2001
¶¶ 76–79, 83). Patent Owner also 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].” Id. at 31 (citing Ex. 2001 ¶ 90). Patent Owner’s arguments on design
and manufacturing considerations are found throughout Patent Owner’s
briefs. See generally, PO Resp. 31–55 (grounds 1 and 2); Sur-Reply 8.
Patent Owner relies on the non-precedential opinion in the final
decision in the ’030 IPR to argue that manufacturing concerns are relevant to
whether a person of ordinary skill in the art would have modified the prior
art in the manner Petitioner proposes. Tr. 36:15–23. The ’030 IPR final
decision finds a lens designer of ordinary skill would have “taken into
account manufacturing concerns.” ’030 IPR, Paper 32 at 18; see also Sur-
Reply 8 (“manufacturability . . . is not directed toward the claim limitations,
but rather to whether a [person of ordinary skill in the art] would have
considered manufacturability”). We find that the knowledge of a lens
designer of ordinary skill in the art includes familiarity with manufacturing
and fabrication. See Section III.A above.
Notwithstanding the preceding finding, Patent Owner’s counsel was
unable to cite authority reflecting how manufacturability is relevant to the

13 Patent Owner’s arguments for 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”). For this
Section III.D we discuss the first ground as representative.
IPR2020-00897
Patent 10,324,277 B2
13
ultimate conclusion of obviousness. Tr. 37:5–39:4.14 That a person of
ordinary skill would consider manufacturing issues does not answer whether
the claimed subject matter would have been obvious to that person. The
level of ordinary skill in the art is only part of the obviousness inquiry. For
example, neither Patent Owner nor its expert explain sufficiently how the
manufacturing arguments show any “differences between the prior art and
the claims at issue.” See Graham, 383 U.S. at 17–18. This is an
unsurprising result because, as we find below, the claims do not recite any
manufacturing requirements.
Patent Owner does not specifically argue that the Petition lacks a
sufficient showing of reasons to combine Ogino Examples 4 or 5 and
Bareau. See generally PO Resp. Patent Owner does argue that a person of

14 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 appeal as I understand it, to support patent
owner’s view that in some way manufacturing concerns are
relevant to whether a person of ordinary 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 of ordinary skill in the art
would need to -- necessarily need to consider that to make sure
that they could in fact create this lens assembly.
JUDGE ANDERSON: They need 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 any legal
authority to support that position?
MR. LINK: Well, beyond this -- you know, this prior holding
here, no. . . .
IPR2020-00897
Patent 10,324,277 B2
14
ordinary skill would not combine the references based on various
manufacturing considerations. See, e.g., id. at 37 (a person of ordinary skill
“would not have modified Ogino Example 4” with Bareau because of
relative illumination considerations). Patent Owner argues that “in some
instances the prior art teaches away from the proposed combination.” Id. 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
reasons a person of ordinary skill would not have combined the references.
See Sections III.E.5 and III.F.8 below (analyzing the reasons for combining
the references).
Neither does Patent Owner identify any theory of patentability based
on an alleged inability to manufacture the claimed invention. As noted
above, problems in physically combining references are irrelevant to
whether a 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
obviousness is not “whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
references”).
We find 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 of ordinary skill in the relevant field 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
IPR2020-00897
Patent 10,324,277 B2
15
language, which does not recite 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).
The finding is also by supported by testimony from Patent Owner’s
and Petitioner’s experts. Relative to manufacturing, Dr. Milster testified 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 not care, about the
special manufacturing concerns that crop up during the production of
polymer lens designs.” Ex. 1030,15 56 (emphasis original). Petitioner
argues Patent Owner inconsistently argues that manufacturing considerations
are relevant here when they were argued as being irrelevant 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 Owner are also discussed.

15 Declaration of Duncan Moore, Ph.D. Pursuant to 37 C.F.R. § 1.68 in
’030 IPR.
IPR2020-00897
Patent 10,324,277 B2
16
E. Obviousness of Claims 1–3 and 5–8 over Ogino Example 4 and Bareau
Petitioner alleges claims 1–3 and 5–8 would have been obvious over
Ogino Example 4 and Bareau. Pet. 10. Petitioner also relies on the Sasián
Declaration and the Sasián Reply Declaration. Ex. 1003 ¶¶ 44–62; Ex. 1037
¶¶ 12–73. The Sasián Declaration includes a claim chart for this ground
appended to paragraph 62. Ex. 1003, 34–60.
1. Ogino Example 4 (Ex. 1005)
Ogino discloses a five-lens system for use in portable devices. Ex.
1005, Abstract, 1:6–16. Ogino’s lens system is designed for use in “a digital
still camera, a cellular phone with a camera, a mobile information terminal
(PDA: Personal Digital Assistance), a smartphone, a tablet terminal, and a
mobile game machine, on which the imaging lens is mounted to perform
photography.” Id. at 1:11–16.
Figure 4 of Ogino is reproduced below.

IPR2020-00897
Patent 10,324,277 B2
17
Figure 4 is a lens cross-sectional view of an imaging lens corresponding
to Example 4.

Ex. 1005, 4:1–4. Ogino explains that there is a demand for five-lens systems
in portable devices to “to enhance the resolution and performance of the
imaging lens.” Id. at 1:30–31.
As shown in Figure 4 above, Ogino’s Example 4 includes five 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
embodiment disclosed in Ogino, which is shown above, include a “first lens
Ll 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. Id.
at 13:8–11. In the fourth embodiment, the third lens L3 has a negative
refractive power. Id. at 13:44–50. Also common among all embodiments,
“the fourth lens L4 . . . has a meniscus shape which is convex toward the
image side; and the fifth lens L5 . . . has a negative refractive power and has
at least one inflection point on an image side surface.” Id. 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 cameras is
different from designing for traditional imaging systems.” Ex. 1012, 1.
Bareau explains the “scale of cell phone camera systems creates particular
challenges for the lens designer that are unique to this format.” Id.
Bareau explains that “initial cell phone cameras were based around
VGA and QVGA modules with 5.6 µm pixels” with formats between 1/7”
and 1/4” in size. Ex. 1012, 2. Bareau lists “typical lens specifications for a
¼” sensor format” for use in cellular telephones, including an f-number of
IPR2020-00897
Patent 10,324,277 B2
18
2.8. Id. at 3–4. Bareau also indicates a TTL must be at least 0.050mm to
protect the front of the lens. Id. at 3. Bareau states that “most camera
module customers specify f/2.8, it is not uncommon to see lenses at f/3.0 and
f/3.3 when the increased fno has a significant effect on performance or
manufacturability.” Id. at 4.
3. Claim 1
Limitation 1.0, the preamble of claim 1, recites “[a] lens assembly,
comprising: a plurality of refractive lens elements arranged along an optical
axis.” Petitioner cites to Figure 4, Example 4, of Ogino, lenses L1 through
L5, and optical axis Z1 as meeting the preamble. Pet. 20–22 (citing
Ex. 1005, Fig. 4 (annotated at Pet. 21)). Petitioner alleges that all lenses are
“refractive.” Id. at 21–22 (citing Ex. 1005, 9:11–12, 9:29, 7:51–53, 7:67–
8:1, 8:8). That the lenses are arranged along the optical axis Z1 is further
supported by the Sasián Declaration. Id. 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 of the first
to fifth lenses L1 to L5 are aspheric.” Pet. 23–24 (citing Ex. 1005, 15:22–
24) (emphasis omitted). Table 7 of Ogino shows specific 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 correspond to 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).
IPR2020-00897
Patent 10,324,277 B2
19
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, Ogino states ‘f is a focal
length of a whole system.’” Pet. 25 (citing Ex. 1005, 3:16; Ex. 1003, 38).
Petitioner also cites to Table 7 and its disclosure of “f=4.555” as teaching
EFL. Id. 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 window positioned between the plurality of lens elements
and an image plane has a total track length (TTL) of 6.5 millimeters or less.”
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 summing the distances (Di) listed in Table 7 between
lenses of Ogando as 4.36216 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/EFL is less than 1.0.”
Petitioner alleges “the EFL of Ogino’s Example [4] lens assembly is 4.555
mm, as shown in 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. We also note that if TL=4.260 that still 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.
IPR2020-00897
Patent 10,324,277 B2
20
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.” Id. (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 and is less than 1.0. Id. (citing Ex. 1003, 44).
Limitation 1.5 recites “wherein the plurality of lens elements
comprises, in order from an object side to an image side, a first lens element
with positive refractive power.” 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 shown for limitation 1.2, which is
4.555 mm. Id. (citing Ex. 1003, 46). Dividing the EFL of 4.555 into the f/f1
ratio the focal length for L1 alone is 4.555/2.49=1.829 mm. Id. (citing Ex.
1003, 46). Relying on the Sasián Declaration, Petitioner alleges refractive
power is the inverse of focal length or 1/1.829 mm=0.5467 mm-1, 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. 1010,17
159)).
Limitation 1.6 recites “a second lens element with negative refractive
power.” Petitioner cites to its showing with respect to limitation 1.5 for lens
L2. Pet. 34. Petitioner calculates L2’s focal length (f2) starting with the
“entire Example 4 lens system (f) and the data provided in Table 13 for

17 Born M. and Wolf E., Principles of Optics, (Pergamon Press, 6th Ed.
1980).
IPR2020-00897
Patent 10,324,277 B2
21
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. Id. at 35 (citing
Ex. 1003, 47). Petitioner then calculates refractive power as the inverse of
focal length, 1/-.2489=-0.4017 mm-1, which is a negative refractive power.
Id. (citing Ex. 1003, 48).
Limitation 1.7 recites “and a third lens element.” Petitioner alleges
Ogino teaches this limitation “because its Example 4 lens assembly includes
a third lens L3.” Pet. 36–37 (citing Ex. 1005, Fig. 4 (annotated at Pet. 36);
Ex. 1003, 48–49).
Limitation 1.8 recites “wherein a focal length f1 of the first lens
element is smaller than TTL/2.” Petitioner alleges Ogino’s L1 lens, as
shown in connection with Example 4 and limitation 1.5, has a focal length f1
of 1.829 mm. Pet. 37 (citing Ex. 1003, 49). Petitioner alleges, as it did in
connection with limitation 1.2, that “the TTL of the Example 5 lens
assembly with the cover glass element is 4.362 mm.” Id. Performing the
calculation, Petitioner alleges the f1 of 1.829 is less than TTL divided by 2
or 4.362 mm/2=2.181 mm. Id. (citing Ex. 1003, 49). Similarly, Petitioner
contends that Ogino’s Example 4 lens assembly also meets the recited ratio
because f1=1.829 mm and TTL/2=2.181 mm. Id. (citing Ex. 1003, 49).
Limitation 1.9 recites “and wherein a lens assembly F # is smaller
than 2.9.” Petitioner relies on Bareau to show the f# limitation. Pet. 38.
Petitioner alleges a person of ordinary skill “would have found this
modification to be both predictable and desirable due to Ogino’s other
disclosed embodiments supporting a lower f-number . . . [and] Bareau’s
teaching of cell phones supporting f-numbers of 2.8 or less.” Id. (citing Ex.
1005, Figs. 8–13; Ex. 1003, 49); see also Section III.E.5 below (reasons for
IPR2020-00897
Patent 10,324,277 B2
22
combining Ogino Example 4 and Bareau). Petitioner also cites to a desire
for faster lenses. Id. (citing Ex. 1013,18 104). Petitioner relies on the Sasián
Declaration to present Ogino’s Example 4 modified with an f-number of 2.8.
Id. at 38–39 (citing Ex. 1003, 50, Fig. 2A).
Patent Owner does not dispute the argument and supporting evidence
that limitations 1.0 through 1.9 are shown by the combination of Ogino
Example 4 and Bareau. We find Petitioner’s argument and supporting
evidence summarized above sufficient to show limitations 1.0 through 1.9.
4. Claims 2–3 and 5–8
We have reviewed Petitioner’s evidence and argument regarding
claims 2–3 and 5–9. Pet. 39–51. We have also reviewed the evidence
provided in the Sasián Declaration, including the claim chart appended. Ex.
1003, 50–60, 71–110 (claim chart). Patent Owner does not separately argue
claims 2–3 and 5–8. PO Resp. 39.
Specifically, claim 2 depends from claim 1 and recites that “the third
lens element has negative refractive power.” Petitioner cites to its showing
regarding limitations 1.6 and 1.7 as teaching a third lens with a negative
refractive power. Pet. 39 (citing Ex. 1005, 23:25–40 (Table 13, annotated at
Pet. 40); Ex. 1003, 51).
Claim 3 also depends from claim 1 and recites five lens elements, as is
shown in Ogino. Petitioner relies on Ogino’s five lens embodiment of
Figure 4. Pet. 42 (citing Ex. 1005, Fig. 4 (annotated at Pet. 42)).
Claim 5 depends from claim 2 and recites five lens elements where
the fourth and fifth lenses have “different refractive power signs.” As with

18 Kingslake, R., Optics in Photography, (The Society of Photo-Optical
Engineering, 1992).
IPR2020-00897
Patent 10,324,277 B2
23
claim 3, Petitioner cites to Ogino’s Figure 4 for the five lens elements. Pet.
43–44 (citing Ex. 1005, Fig. 4 (annotated at Pet. 44); Ex. 1010, 159, 161–
162; Ex. 1003, 54). As to the recitation of different refractive powers,
Petitioner cites to Ogino and the Sasián Declaration as showing “[t]he
refractive power of lens elements L4 and L5 are calculated . . . by finding
the reciprocal of their respective focal lengths calculated” as was done in
limitation 1.5. Id. at 44–47 (citing Ex. 1005, 19:28–40, 20:28–40 (Table 7
annotated at Pet. 45), 23:25–40 (Table 13, annotated at Pet. 46); Ex. 1003,
55–57).
Claim 6 depends from claim 3 but otherwise recites the subject matter
of claim 5 regarding different refractive powers of the fourth and fifth
lenses. Petitioner relies on its showing made in connection with claim 5.
Pet. 47.
Claim 7 depends from claim 3 and recites “a fourth lens element and a
fifth lens element are separated by an air gap smaller than TTL/20.”
Petitioner cites to Ogino’s Table 7 to obtain the distance between lenses L4
and L5, the “air gap,” which is 0.151 mm. Pet. 48 (citing Ex. 1005, 19:28–
40, 20:28–40 (Table 7, annotated at Pet. 48)). Petitioner takes its calculation
of TTL from limitation 1.5, which is 4.362 mm, and calculates the recited
“TTL/20” as 0.218 mm, which is less than the air gap of 0.151 mm. Id. at
48–49 (citing Ex. 1003, 58–59).
Claim 8 depends from claim 3 and recites “one of a fourth lens
element and a fifth lens element is characterized by an Abbe number smaller
than 30 and wherein the other of the fourth lens element and the fifth lens
element is characterized by an Abbe number greater than 50.” Petitioner
again cites to Ogino’s Table 7 and the Sasián Declaration. Pet. 49–51 (citing
Ex. 1005, 19:28–40, 20:28–40 (Table 7, annotated at Pet. 50); Ex. 1003, 60).
IPR2020-00897
Patent 10,324,277 B2
24
Petitioner identifies the Abbe numbers for lenses L4 and L5 directly from
Table 7 as the “vdj” numbers of 23.63 and 54.87 respectively. Id. at 50
(citing Ex. 1005, 14:45–47 (the vdj value is the Abbe number)).
Patent Owner does not dispute the argument and supporting evidence
that the recitations of dependent claims 2–3 and 5–8 are shown by the
combination of Ogino and Bareau. We find Petitioner’s argument and
supporting evidence summarized above is sufficient to show the limitations
recited in claims 2–3 and 5–8.
5. Reasons for Combining Ogino Example 4 and Bareau
Petitioner argues a person of ordinary skill would have reasons to
combine Ogino and Bareau. Pet. 14–20. Specific to limitation 1.9,
Petitioner argues the combination of Bareau teaches “a lens assembly F # is
smaller than 2.8.” Pet. 14. Petitioner asserts the combination would have
been
nothing more than applying Bareau’s specification for a brighter
lens system for smaller image sensors, according to known lens
design and modification methods (as taught in [Ex. 1017,19 172]),
to yield a predictable result of Ogino’s Example 4 lens
assemblies likewise providing an f-number of 2.8 or lower.

Id. (citing Ex. 1003, 27 (citing Ex. 1012, 3–4)).
Petitioner argues several advantages of a cell phone lens with an “f-
number of 2.8 or lower for ¼” or smaller sensors was common and it was at
least expected that cell phone camera lenses would satisfy similar
specifications.” Pet. 14 (citing Ex. 1012, 3; Ex. 1024 (“Wang”)20, 1:38–42;
Ex. 102521, 4:54–57). Petitioner adds that designers and manufacturers of

19 Fischer, Optical System Design, (2d Ed. SPIE Press © 2008).
20 Wang, US Patent No. 7,321,475 B2, issued Jan. 22, 2008.
21 Kubota, US Patent No. 8,508,648 B2, issued Aug. 13, 2013.
IPR2020-00897
Patent 10,324,277 B2
25
lenses desired to produce lenses of lower f-number, which result in “faster
lenses.” Id. These objectives are “an indication of the need that exists for
brighter images and ‘faster’ lenses.” Id. at 14–15 (citing Ex. 101522, 104;
Ex. 1025, 4:54–67).
Petitioner emphasizes Wang’s discussion of lens performance as
based on “four main requirements,” the first of which is “a high brightness
requirement, which means that the lens system should have a small F
number (FNo.) Generally, the FNo. should be 2.8 or less.” Pet. 15 (citing
Ex. 1024, 1:38–42). Petitioner contends Bareau’s lens specifications,
including the importance of an f-number of 2.8 or less, would have been
known to a person of ordinary skill in the art. Id. (citing Ex. 1003, 30).
According to Petitioner, a person of ordinary skill in the art would
therefore have been “motivated to look to lens designs like Ogino’s that
could support a lower, more desirable F number” in part, because “Ogino’s
other embodiments support f-numbers values down to 2.45 (noting that the
f-numbers of Ogino’s Examples 1–3 and 6, which all utilize a similar
structure to Example 4, have a lower F number than 2.8 being respectively
set at 2.47, 2.46, 2.45, and 2.64).” Id. at 15–16 (citing Ex. 1003, 29; Ex.
1005, Figs. 8–10, 13). Petitioner then argues “modifying Ogino’s Example
4 lens assembly to have an f-number of 2.8, as taught in Bareau, would have
been nothing more than applying Bareau’s specification of an F# of 2.8 for a
¼” image sensor format according to known lens design methods (as taught
in Fischer ([Ex.] 1017)) to allow Example 4 to likewise better support a ¼”
sensor format in a thin cell phone.” Id. at 16.

22 Matsuzaka, JP 2013-106289, published May 30, 2013 (certified
translation).
IPR2020-00897
Patent 10,324,277 B2
26
Petitioner notes that Bareau describes a wide angle lens with a field of
view (FOV) of 60 degrees. Pet. 16 (citing Ex. 1005, Figs. 14, 15).
However, Petitioner argues FOV is a design consideration and the
specifications for f-number and TTL would also apply to “incorporating a
telephoto lens,” as described in Example 4 of Ogino. Id. (citing Ex. 1003,
31; Ex. 101423, Fig. 16; Ex. 1012, 3–4). Petitioner also explains that a
person of ordinary skill in the art “would have understood that one way of
modifying Ogino’s Example 4 to decrease the f-number is to increase the
diameter of one or more lens elements.” Id. at 17 (citing Ex. 1003, 30, 32;
Ex. 101624, 59). Relying on Dr. Sasián’s explanation of Zemax lens design
software, Petitioner shows one possible lens design of Ogino Example 4
with an f-number of 3.04 modified to an f-number of 2.8. Id. at 18–19
(citing Ex. 1003, 32 (Sasián Dec., 112, 115 (Figs. 1A and 2A “Ray Trace
Diagram” compared side by side for F#=3.04 and F#=2.8)), (Sasián Dec.
113, 116 (Figs. 1B and 2B “Relative Illumination” compared side by side for
F#=3.04 and F#=2.8))). Still relying on Dr. Sasián’s testimony and the
Zemax software, Petitioner shows how the modification results in similar
design and performance characteristics. Id. at 19 (citing Ex. 1003, 32
(Sasián Dec. 114, 117 (Figs. 1C and 2C “Analysis” compared side by side
for F#=3.04 and F#=2.8))).
Patent Owner does not specifically dispute the argument and
supporting evidence providing reasons for combining Ogino’s Example 4
with Bareau. To the extent Patent Owner argues some of Petitioner’s
showing is related to design issues, they are discussed below. We find

23 Parulski, US Patent No. 7,859,588 B2, issued Dec. 28, 2010.
24 Walker, Optical Engineering Fundamentals, McGraw-Hill (1994).
IPR2020-00897
Patent 10,324,277 B2
27
Petitioner’s argument and supporting evidence summarized above
sufficiently show reasons for combining Ogino’s Example 4 with Bareau.
6. Patent Owner’s Arguments
As stated in Section III.D, the panel finds that the knowledge of a lens
designer of ordinary skill in the art includes familiarity with manufacturing
and fabrication, which makes design and manufacture relevant to
patentability (e.g. Graham factor 3, level of skill in the art). However, we
determined Patent Owner’s arguments related to design and manufacture
considerations are not recited in any of the challenged claim. Specifically,
with respect to claim 1 on the first ground, Patent Owner leads its Response
with this manufacturing argument. PO Resp. 31. Patent Owner states
Petitioner “does not address the tolerances and manufacturability of the
design that would necessarily be considered by a [person of ordinary skill in
the art].” Id. (quoting Ex. 2001 ¶ 89).
Patent Owner attempts to make the design and manufacturing
considerations relevant using deposition testimony from, Dr. Sasián. PO
Resp. 31–32. Patent Owner alleges Dr. Sasián “admits that lenses in
Ogino’s Example 4” are not oversized. PO Resp. 30–31 (citing “Sasián
Dep.,”25 Ex. 2003, 120:5–10); see Ex. 1005, Fig. 4 (illustrating Example 4)).
The cited cross examination testimony by Dr. Sasián does not make the
design and manufacturing evidence relevant to patentability.
Patent Owner argues the combination relied on by Petitioner uses
Ogino’s “overlapping lenses.” PO Resp. 32 (citing Ex. 1003, 115). Further,
Patent Owner argues Ogino’s lens elements touch and would not be used by

25 The deposition is in an inter partes review concerning US Patent No.
10,317,647, but the testimony relates to the ’277 patent. Ex. 2003, 135:8–
11.
IPR2020-00897
Patent 10,324,277 B2
28
a person of ordinary skill in the art, based on a summary of Exhibit 200626
indicating lenses “should be spaced at greater than the maximum tolerance.”
Id. at 33–34 (citing Ex. 2006 (no pin cite); Ex. 2001 ¶ 94 (also citing Ex.
2006)). Patent Owner concludes by arguing Ogino’s overlapping lens
design would “never be acceptable for an optical design, let alone for
manufacturing, tolerances or desensitization.” Id. at 34 (citing Ex. 2001
¶ 94).
Both parties’ showings regarding overlapping or touching lenses are
based on expert testimony, which is, in turn, based on the drawings in the
references. Ex. 2001 ¶¶ 93–94; Ex. 1037 ¶¶ 41–42. Patent Owner cites the
Sasián Declaration as showing two lenses touching. PO Resp. 33 (citing
Ex. 1003, 115). Patent Owner also cites Exhibit 100727 to allege design
“rules of thumb” would result in “the distance separating the two at the
closest point is so small as to be essentially touching.” PO Resp. 34–35;
Sur-Reply 6. Patent Owner also argues a person of ordinary skill in the art
“would not have two lenses touch each other.” PO Resp. 34–35 (citing Ex.
1007 (describing tolerances for lenses); Exhibit 200828, 95). Conversely,
relying on Dr. Sasián’s testimony based on a Zemax analysis, Petitioner
argues the L2 and L3 lenses of Ogino Example 4 do not touch or overlap.
Reply 21 (citing Ex. 1037 ¶ 41 (Figs. 4A and 4B)).

26 McGuire Jr et al., Approaching direct optimization of as-built lens
performance, (Proceedings of SPIE) (October 2012).
27 Beich et al., Polymer Optics: A manufacturer’s perspective on the factors
that contribute to successful programs, (Society of Photo-Optical
Instrumentation Engineers 2010).
28 Symmons et al., Field Guide to Molded Optics, (Society of Photo-Optical
Instrumentation Engineers (SPIE), copyright 2016).
IPR2020-00897
Patent 10,324,277 B2
29
Patent Owner argues that the enlarged drawing from the Sasián
Declaration, which is reproduced at page 33 of the Response, arguably
supports a finding that Ogino’s Example 4 lenses L4 and L5 touch. See PO
Resp. 33. However, patent drawings “predicated, moreover, on a greatly
enlarged section of a small drawing obviously never intended to show the
dimensions of anything.” Application of Wilson, 312 F.2d 449, 454
(C.C.P.A. 1963) (finding an enlarged section of a small drawing
unpersuasive).
We find that Dr. Sasián’s lens design software analysis using the
Zemax software shows that L4 and L5 do not touch. See Reply 8–9 (citing
Ex. 1037 ¶ 14 (Zemax ray analysis showing L4 and L5 do not touch)).29
Patent Owner disputes the design process used by Dr. Sasián but does not
rebut the ray analysis and did not provide a response from Dr. Milster. See
Sur-Reply 5–7. In making our finding, we credit Dr. Sasián’s opinion
testimony as supported by his ray analysis. Regardless, as we have already
found, manufacturing considerations such as touching lenses do not provide
a reason not to combine Bureau with Ogino Example 4.

29 Dr. Sasián testified in other inter partes review proceedings, made of
record here, that lenses L4 and L5 “may be touching.” See Ex. 2012
(Second Sasián Deposition taken in IPR2020-00877, 878, 897, and 906 on
July 16, 2021), 91:20–92:3. Although Patent Owner relied on this testimony
in IPR2020-00896, it does not cite this testimony in this proceeding, we thus
do not consider it here in analyzing whether Ogino’s lenses L4 and L5
touch. Nevertheless, even if we were to consider this testimony, it would
not alter our finding that the lenses do not touch. Dr. Sasián’s testimony is
equivocal because he qualified the response by indicating “the resolution
may not be enough to show they are separate or maybe they are touching.”
Id. at 93:14–19. Dr. Sasián further testified that he would have to “reserve
my answer” regarding the touching of the lenses until he could do “an
analysis with the lens design program.” Id.
IPR2020-00897
Patent 10,324,277 B2
30
Patent Owner next argues “Bareau teaches against Modified Example
4.” PO Resp. 35 (citing Ex. 2001 ¶ 96). At page 36 of the Response, Patent
Owner reproduces “Fig. 2B – Relative Illumination” from the Sasián
Declaration and argues the relative illumination of Ogino Example 4 is less
than 50% when Bareau teaches that for a “typical lens specifications for a
1∕4” sensor format,” relative illumination is “>50%.” Id. at 36 (citing Ex.
1012, 7). According to Patent Owner, this disparity in relative illumination
means a person of ordinary skill “would not have modified Example 4 of
Ogino to arrive at the lens configuration of Modified Example 4.” Id. at 37
(citing Ex. 2001 ¶ 98).
As discussed above, design and manufacturing requirements, like
relative illumination, are not limitations recited in any of the claims. See
Reply 16–17; Ex. 1037 ¶ 22 (Milster Declaration paragraphs 92–98 re:
relative illumination are manufacturing considerations); Sur-Reply 9–11.
Bareau teaches that “Lens specifications usually require a value greater than
50% at the edge of the field.” Ex. 1012, 7 (emphasis added). This statement
is limited to what “specifications usually require” and is not strong enough
to discourage a person ordinary skill from using a lens with lower relative
illumination. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); see also
Ex. 1037 ¶ 25 (“Even in the case where certain manufacturing
considerations are important for a particular design or purpose and are not
met, it does not automatically mean that the design is impossible to make.”
(citing Ex. 1007, 9)). The Milster Declaration does not add anything to
Bareau, simply repeating Bareau’s 50% preference and concluding a person
of ordinary skill would not look to Ogino Example 4 because its 30%
relative illumination is “far less than the 50% or greater taught by Bareau.”
Ex. 2001 ¶¶ 97–98.
IPR2020-00897
Patent 10,324,277 B2
31
We credit the Sasián Reply Declaration testimony and find that
“various manufacturing considerations listed by Dr. Milster to be relevant to
the lens design at issue . . . would have been understood to be preferences
and not requirements.” Reply 13 (quoting Ex. 1037 ¶ 23). Patent Owner
does not dispute Dr. Sasián’s reply testimony. Of course, showing
unpatentability is Petitioner’s burden, and Patent Owner does not need to
respond. Nonetheless, as an evidentiary matter we find Petitioner’s evidence
and argument persuasive. Patent Owner broadly responds that relative
illumination of greater than 50% is desired and is “an important criterion to
consider.” Sur-Reply 9–10 (citing Ex. 2010, 49:2–60). For reasons already
discussed, this manufacturing argument is not persuasive on the issue of
obviousness.
Patent Owner argues that a person of ordinary skill would “have
allowed spacing between lens surfaces to vary” to improve performance.
PO Resp. 37 (citing Ex. 2001 ¶ 99). Patent Owner argues that the lens
prescription in the Sasián Declaration for Ogino Example 4 varies only two
parameters, not including lens spacing. Id. at 37–38 (citing Ex. 1003, App.
116 (reproducing Fig. 2D-Prescription Data); Ex. 2003, 135:8–22). Patent
Owner alleges that “[p]rohibiting the spacing between lens surfaces from
varying while designing a lens would have reduced the ability to improve
the performance by limiting the direction along the optimization merit-
function surface and might have prevented a [person of ordinary skill in the
art] from finding the best performance result.” Id. at 38 (citing Ex. 2001
¶ 100). According to Patent Owner not varying spacing means a person of
ordinary skill would not have designed a lens assembly as modified in Ogino
Example 4. Id. at 38–39 (citing Ex. 2001 ¶¶ 100–102). To the extent Patent
Owner argues that Petitioner’s proposed combination would have prevented
IPR2020-00897
Patent 10,324,277 B2
32
a person of ordinary skill in the art from finding the best performance result,
the claims do not require a particular performance result.
Patent Owner argues the “lens assembly [is] non-enabled.” PO Resp.
35 (citing Nokia of Am. Corp. v. Oyster Optics, LLC, IPR2018-00146, Paper
No. [36] at 22 (PTAB April 29, 2019)).30 The assertion is not supported by
the cited decision or any expert testimony. As such, we are faced with an
unsubstantiated allegation. Patent Owner does not explain sufficiently how
or why an alleged lack of enablement should be considered in determining
whether Petitioner has shown sufficient reasons for combining the
references.
For the reasons summarized above, Patent Owner’s arguments are not
persuasive.
7. Conclusion
Petitioner has sufficiently shown, and Patent Owner does not dispute,
that each limitation above is taught or suggested by the combination of
Ogino Example 4 and Bareau. We find that Petitioner has shown sufficient
reasons for combining Ogino and Bareau. Patent Owner’s design and
manufacturing arguments do not undercut Petitioner’s showings. Petitioner
has shown by a preponderance of the evidence that claims 1–3 and 5–8
would have been obvious over Ogino Example 4 and Bareau.
F. Obviousness of Claims 1–24 over Ogino Example 5 and Bareau
Petitioner alleges claims 1–24 would have been obvious over Ogino
Example 5 and Bareau. Pet. 51. Petitioner also relies on the Sasián
Declaration and the Sasián Reply Declaration. Ex. 1003 ¶¶ 63–76; Ex. 1037

30 Patent Owner’s citation to Paper 37 is incorrect. There is no Paper 37 in
IPR2018-00146, and page 22 of Paper 36 (the Final Written Decision in that
IPR) does not discuss enablement.
IPR2020-00897
Patent 10,324,277 B2
33
¶¶ 12–73. The Sasián Declaration includes a claim chart appended to
paragraph 77. Ex. 1003 ¶ 77, 71–110.
1. Ogino Example 5 (Ex. 1005)
Ogino Figure 4, relating to “Example 4,” is discussed above in
Section III.E.1. Ogino’s Figure 5, which relates to “Example 5,” is
reproduced below.

Figure 5 is a lens cross-sectional view of an imaging lens corresponding
to Example 5.

Ex. 1005, 4:5–8. In Ogino’s fifth embodiment, which is shown in Figure 5,
the “lens configurations of the first to fifth lenses L1 to L5 are common to
the fourth embodiment,” Fig. 4. Id. at 13:58–63; see Section III.E.1 above.
“Therefore, according to the respective lens configurations, it is possible to
obtain the same effects as the respective corresponding configurations of the
fourth embodiment.” Id. at 13:60–63.
IPR2020-00897
Patent 10,324,277 B2
34
In Example 5, the five lens elements are identified as L1–L5 and are
aspheric. Ex. 1005, 13:4–5. Also included in Example 5 are “optical
members CG [which] may be disposed between the fifth lens L5 and the
imaging device,” and which may be “cover glass” acting as a filter. Id. at
5:66–6:2; see Fig. 5 above element CG. The Example 5 lens system is
described with reference to the specific lens data shown in Table 9. Id. at
15:18–22, 21:10–35.
2. Claim 1
Much of Petitioner’s showing for Example 5 of Ogino is similar to the
showing made above in Section III.E.3 for Example 4 of Ogino. Compare
Pet. 21 (annotated Fig. 4 of Ogino), with Pet. 60 (annotated Fig. 5 of
Ogino).31 Petition’s allegations regarding claim 1 are summarized below.
For limitation 1.0, the preamble of claim 1, Petitioner cites to Figure
5, Example 5, of Ogino, lenses L1 through L5, and optical axis Z1 (see Fig.
5 above) as meeting the preamble. Pet. 59–61 (citing Ex. 1005, Fig. 5
(annotated at Pet. 60)). Petitioner alleges that all lenses are “refractive.” Id.
at 60 (citing Ex. 1005, 9:11–12, 5:13–15). That the lenses are arranged
along the optical axis Z1 is further supported by the Sasián Declaration. Id.
at 60 (citing Ex. 1003, 75).
Limitation 1.1 recites “wherein at least one surface of at least one of
the plurality of lens elements is aspheric.” Ogino describes that in the

31 Petitioner refers to a “second modification” of Example 5 as also teaching
certain limitations. See, e.g., Pet. 62 (citing Ex. 1003, 76). The second
modification is Example 5 “modified for an f-number of 2.8,” as taught by
Bareau, but is otherwise the same as the showing made for Example 5. Id. at
59 (citing Ex. 1003, 70). For purposes of this Decision, unless specifically
referenced, we do not include the showing made for the second
modification.
IPR2020-00897
Patent 10,324,277 B2
35
imaging lenses in Examples 1 through 6, “both surfaces of each of the first
to fifth lenses L1 to L5 are aspheric.” Pet. 61–62 (citing Ex. 1005, 15:22–
24) (emphasis omitted). Table 9 of Ogino shows specific data for Example
5. Id. at 61; Ex. 1005, 15:18–22, 21:10–36 (Table 9, annotated at Pet. 62).
Petitioner relies on the preceding disclosures and alleges that lens surfaces 1,
2, and 4–11 are aspheric and correspond to lenses L1 through L5. Id. at 61
(citing Ex. 1005, Table 9 annotated; Ex. 1003, 76).
Limitation 1.2 recites “wherein the lens assembly has an effective
focal length (EFL).” Petitioner alleges a person of ordinary skill would
understand “the term ‘effective focal length’ (EFL)’ is construed to mean
‘the focal length of a lens assembly.’ In that regard, Ogino states ‘f is a
focal length of a whole system.’” Pet. 63–64 (citing Ex. 1005, 3:16, 14:47–
53, 21:10–36 (Table 9, annotated at Pet. 63)); see also id. at 64 (citing Ex.
1003, 77). Petitioner also cites to Table 9 and its disclosure of “f=5.575” as
teaching the recited EFL. Id. at 64.
Limitation 1.3 recites “wherein a lens system that includes the lens
assembly plus a window positioned between the plurality of lens elements
and an image plane has a total track length (TTL) of 6.5 millimeters or less.”
Petitioner uses the method discussed above in connection with Example 4 of
Ogino to determine TTL. See Pet. 64. Ogino Example 5 is asserted to have
a TTL of 5.273 mm. Pet. 64–67 (citing Ex. 1005, 5:55–60, 22:10–36 (Table
9, annotated at Pet. 66), Fig. 5 (annotated at Pet. 65); Ex. 1003, 81, App. Fig.
3A (testimony that the sum of distances D1 to D13 for Example 5 is 5.273
mm)).
Limitation 1.4 recites “wherein a ratio TTL/EFL is less than 1.0.”
Petitioner alleges “the EFL of Ogino’s Example 5 lens assembly is 5.956
mm, as shown in Table 9.” Pet. 67 (citing Ex. 1005, 21:10–36). Petitioner
IPR2020-00897
Patent 10,324,277 B2
36
cites to its showing regarding limitation 1.3 to allege “the TTL of Ogino’s
Example 5 lens assembly with the cover glass element is 5.273 mm.” Id.
(citing Ex. 1005, 21:10–36). Petitioner calculates the ratio of TTL/EFL as
5.273/5.956, which equals 0.8853 and is less than 1.0. Id. (citing Ex. 1003,
81).
Limitation 1.5 recites “wherein the plurality of lens elements
comprises, in order from an object side to an image side, a first lens element
with positive refractive power.” Petitioner again cites Ogino’s Example 5
and its showing in connection with limitation 1.1. Pet. 68–6932; Ex. 1003,
82. Petitioner starts with lens L1’s optical data for the Example 5 lens in
Table 13, f/f1 =2.88. Id. at 70 (citing Table 13, annotated at Pet. 70).
Petitioner’s calculation next looks to the focal length of the entire system as
shown for limitation 1.2, which is 5.956 mm. Id. (citing Ex. 1003, 83).
Dividing the EFL of 5.956 mm into the f/f1 ratio the focal length for L1
alone is 5.956 mm/2.88=2.068 mm. Id. (citing Ex. 1003, 83). Relying on
the Sasián Declaration, Petitioner alleges refractive power is the inverse of
focal length or 1/2.068 mm=0.4863 mm-1, which would have been
understood by a person of ordinary skill to be a positive refractive power.
Id. at 70 (citing Ex. 1003, 83 (citing Ex. 1010, 159)).
Limitation 1.6 recites “a second lens element with negative refractive
power.” Petitioner cites to its showing with respect to limitation 1.5 for lens
L2. Pet. 71. Petitioner calculates L2’s focal length (f2) starting with the
“entire Example 5 lens system (f) and the data provided in Table 13 showing
f/f2=-1.88.” Id. at 71–72 (citing 1005, 23:25–40 (Table 13, annotated at Pet.

32 The Petition cites Figure 5 but the annotation at page 69 is of Figure 4,
Example 4. The showing is sufficient without the correct figure.
IPR2020-00897
Patent 10,324,277 B2
37
72); Ex. 1003, 84). Petitioner repeats the calculation method for limitation
1.5, [f2]=5.956 mm/-1.88=-3.168 mm. Id. at 72 (citing Ex. 1003, 84).
Petitioner then calculates refractive power as the inverse of focal length, 1/-
3.168=-0.3157 mm-1, which is a negative refractive power. Id. (citing Ex.
1003, 85).
Limitation 1.7 recites “and a third lens element.” Petitioner alleges
Ogino teaches this limitation “because its Example 5 lens assembly includes
a third lens L3.” Pet. 73–74 (citing Ex. 1005, Fig. 5 (annotated at Pet. 73);
Ex. 1003, 85–86).
Limitation 1.8 recites “wherein a focal length f1 of the first lens
element is smaller than TTL/2.” Petitioner alleges Ogino’s L1 lens, as
shown in connection with Example 5 and the showing for limitations 1.2 and
1.5, has a focal length f1 of 2.068 mm and the TTL of the Example 5 lens
assembly is 5.273 mm. Pet. 74–75 (citing Ex. 1003, 86). Performing the
calculation, Petitioner alleges the f1 of 2.068 mm is less than TTL divided
by 2 or 5.273 mm/2=2.6365 mm. Id. (citing Ex. 1003, 86).
Limitation 1.9 recites “and wherein a lens assembly F # is smaller
than 2.9.” Petitioner relies on Bareau to show the f# limitation, requiring a
combination of Ogino and Bareau. Pet. 74–76. Petitioner alleges a person
of ordinary skill “would have found this modification to be both predictable
and desirable due to Ogino’s other disclosed embodiments supporting a
lower f-number [and] Bareau’s teaching of cell phones supporting f-numbers
of 2.8 or less.” Id. at 75–76 (citing Ex. 1005, Figs. 8–13; Ex. 1003, 87); see
also Section III.F.8 below (reasons for combining Ogino Example 5 and
Bareau)). Petitioner also cites to a desire for faster lenses. Id. (citing Ex.
1013, 104). Petitioner relies on the Sasián Declaration to present Ogino’s
IPR2020-00897
Patent 10,324,277 B2
38
Example 5 modified with an f-number of 2.8. Id. at 38–39 (citing Ex. 1003,
87, Fig. 5A).
Patent Owner does not dispute the argument and supporting evidence
that limitations 1.0 through 1.9 are shown by the combination of Ogino
Example 5 and Bareau. We find Petitioner’s argument and supporting
evidence summarized above is sufficient to show limitations 1.0 through 1.9.
3. Claims 2–10
Claims 2–10 depend directly or indirectly from claim 1. We have
reviewed Petitioner’s evidence and argument regarding claims 2–10. Pet.
76–90. We have also reviewed the evidence provided in the Sasián
Declaration. Ex. 1003, 87–100.
Claim 2 depends from claim 1 and recites that “the third lens element
has negative refractive power.” Petitioner argues Ogino discloses this
limitation because its Example 5 lens assembly includes a third lens L3 with
negative refractive power. Pet. 76. Petitioner uses Table 13 of Ogino
Example 533 to calculate the focal length of L3 (i.e., f3) of the entire
Example 5 lens system as -6.926 mm. Id. (citing Ex. 1003, 88; Ex. 1004,
23:25–40). The refractive power is the inverse of the focal length or
-0.1444 mm-1. Id. at 77.
Claim 3 depends from claim 1 and recites “five lens elements.”
Petitioner alleges Ogino’s recites five lens elements, as is shown in Ogino’s
Figure 5. Pet. 78 (citing Ex. 1005, Fig. 5 (annotated at Pet. 78)).
Claim 4 depends from claim 1 and recites “wherein the focal length
f1, a focal length f2 of the second lens element and a focal length f3 of the

33 Page 77 of the Petition refers to “Example 4” but Table 13 is annotated for
Example 5 and the numbers used correspond to Example 5.
IPR2020-00897
Patent 10,324,277 B2
39
third lens element fulfill the condition 1.2×|f3|>|f2|>1.5×f1.”34 Relying on
its showings regarding limitations 1.5, 1.6, and claim 2, Petitioner alleges
that Example 5 establishes that lens L1 has a focal length f1 of 2.068 mm,
L2 has a focal length f2 of -3.168 mm, and L3 has a focal length of [f3] of -
6.926 mm. Pet. 79. Substitution of these focal length values into the
claimed expression, 1.2×|f3|>|f2|>1.5×f1 results in 1.2 × |-6.926| > |-3.168| >
1.5 × 2.068. Id. Performing the calculations for each part of the expression
between the greater than symbols leads to 8.3112 > 3.168 > 3.102. Id. at
79–80 (citing Ex. 1003, 90).
Claim 5 depends from claim 2 and recites five lens elements where
the fourth and fifth lenses have “different refractive power signs.” Petitioner
relies on its showing regarding claim 2. Pet. 80 (citing Pet. 76–78; Ex. 1003,
90).
Claim 6 depends from claim 3 but otherwise recites the subject matter
of claim 5 regarding different refractive powers of the fourth and fifth
lenses. Petitioner relies on its showing made in connection with claim 5.
Pet. 84 (citing Pet. 80–84; Ex. 1003, 94).
Claim 7 depends from claim 3 and recites “a fourth lens element and a
fifth lens element are separated by an air gap smaller than TTL/20.”
Petitioner cites to Ogino’s Table 9 to obtain the distance between lenses L4
and L5, the “air gap,” which is 0.10 mm. Pet. 85 (citing Ex. 1005, 21:10–36,
20:28–40 (Table 9, annotated at Pet. 85)). Petitioner takes its calculation of
TTL from limitation 1.3, which is 5.273 mm, and calculates the recited

34 The mathematical notation |X| indicates absolute values. See also Ex.
1005, 11:65–67 (describing a conditional expression, as is claimed here, in
the context of “absolute value”).
IPR2020-00897
Patent 10,324,277 B2
40
“TTL/20” as 0.2637 mm, which is less than the air gap of 0.10 mm. Id. at
85–86 (citing Ex. 1003, 95).
Claim 8 depends from claim 3 and recites “one of a fourth lens
element and a fifth lens element is characterized by an Abbe number smaller
than 30 and wherein the other of the fourth lens element and the fifth lens
element is characterized by an Abbe number greater than 50.” Petitioner
cites to the second modification of Example 5 and Ogino’s Table 9 and the
Sasián Declaration. Pet. 86–87 (citing Ex. 1005, 21:10–36 (Table 9,
annotated at Pet. 87); Ex. 1003, 96). Petitioner identifies the Abbe numbers
for lenses L4 and L5 directly from Table 9 as the “vdj” numbers of 23.63
and 54.87 respectively. Id. at 87 (citing Ex. 1005, 14:45–47 (the vdj value is
the Abbe number)).
Claim 9 depends from claim 5 and includes limitation 9.1 which
recites “the third lens element and the fourth lens element are separated by
an air gap greater than TTL/5.” Petitioner cites to its showing regarding
claim 7, which recites the same subject matter. Pet. 89 (citing Pet. 85–86);
see also Section III.E.4 above (showing regarding claim 7 with respect to
Example 4 of Ogino).
Limitation 9.2 recites “wherein one of the fourth lens element and the
fifth lens element is characterized by an Abbe number smaller than 30, and
wherein the other of the fourth lens element and the fifth lens element is
characterized by an Abbe number greater than 50.” Petitioner cites to its
showing regarding claim 8, which recites the same subject matter. Pet. 89–
90 (citing Pet. 86–87); see also Section III.E.4 above (showing regarding
claim 8 with respect to Example 4 of Ogino).
Claim 10 depends from claim 6 and includes limitation 10.1 which
recites “wherein the third lens element and the fourth lens element are
IPR2020-00897
Patent 10,324,277 B2
41
separated by an air gap greater than TTL/5.” Petitioner cites to its showing
regarding claim 7, which recites the same subject matter. Pet. 90 (citing Pet.
85–86); see also Section III.E.4 above (showing regarding claim 7 with
respect to Example 4 of Ogino).
Limitation 10.2 recites “wherein one of the fourth lens element and
the fifth lens element is characterized by an Abbe number smaller than 30,
and wherein the other of the fourth lens element and the fifth lens element is
characterized by an Abbe number greater than 50.” Petitioner cites to its
showing regarding claim 8, which recites the same subject matter. Pet. 90
(citing Pet. 86–87); see also Section III.E.4 above (showing regarding claim
8 with respect to Example 4 of Ogino).
Patent Owner does not dispute the argument and supporting evidence
that dependent claims 2–10 are shown by the combination of Ogino
Example 5 and Bareau. We find Petitioner’s argument and supporting
evidence summarized above are sufficient to show dependent claims 2–10.
4. Claim 11
Claim 11 is an independent claim which repeats the subject matter of
claim 1. Claim 11 is similar to claim 1 with the exception of adding the
subject matter of dependent claim 4 and omitting limitations 1.8 and 1.9.
See Section II.D above. Patent Owner does not dispute the argument and
supporting evidence that limitations of claim 11 are shown by the
combination of Ogino Example 5 and Bareau. Petitioner’s showing is very
similar to the showing made above in Sections III.E.3 as to claim 1. See Pet.
91–95. Petitioner has sufficiently shown that Ogino Example 5 in
combination with Bareau teaches all the limitations of claim 11.
IPR2020-00897
Patent 10,324,277 B2
42
5. Claims 12–17
Claims 12–17 depend directly or indirectly from claim 11. Claim 12’s
subject matter corresponds to that of claim 2, claim 13’s to claim 3, claim
14’s to claim 5, claim 15’s to claim 6, claim 16’s to claim 7, and claim 17’s
to claim 8. Patent Owner does not dispute the argument and supporting
evidence that limitations of claims 12–17 are shown by the combination of
Ogino Example 5 and Bareau. Petitioner’s showing is very similar to the
showing made above in Section III.E.4 as to claims 2–3 and 5–8. See Pet.
95–97. Petitioner has sufficiently shown that Ogino Example 5 in
combination with Bareau teaches all the limitations of claims 12–17.
6. Claim 18
Claim 18 is an independent claim which, like claim 11, repeats the
subject matter of claim 1. Claim 18 is similar to claim 1 with the exception
of adding the subject matter of a fourth lens element with “an air gap greater
than TTL/5,” recited in part in dependent claim 9, and omitting limitation
1.8. Patent Owner does not dispute the argument and supporting evidence
that limitations of claim 18 are shown by the combination of Ogino Example
5 and Bareau. Petitioner’s showing is similar to the showing made above in
Sections III.F.2 and III.F.3 as to claims 1 and 9. See Pet. 97–100. Petitioner
has sufficiently shown that Ogino Example 5 in combination with Bareau
teaches all the limitations of claim 18.
7. Claims 19–24
Claims 19–24 depend directly or indirectly from claim 18. We have
reviewed Petitioner’s evidence and argument regarding claims 12–17. Pet.
100–102. We have also reviewed the evidence provided in the Sasián
Declaration. Ex. 1003, 109–110.
IPR2020-00897
Patent 10,324,277 B2
43
Claim 19’s subject matter corresponds to that of claim 2, claim 20’s to
claim 5, claim 21’s to claim 7, claim 22’s to claim 8, claim 23’s to limitation
1.8, and claim 24’s to claim 6. Accordingly, Petitioner’s showing is very
similar to the showing made above in Section III.F.2 as to limitation 1.8 and
III.F.3 as to claims 2, 5, 7, and 8. See Pet. 100–102. Petitioner has
sufficiently shown that Ogino Example 5 in combination with Bareau
teaches all the limitations of claims 19–24.
8. Reasons for combining Ogino Example 5 and Bareau
Petitioner argues a person of ordinary skill would have had reasons to
combine Ogino Example 5 and Bareau. Pet. 53–59. Petitioner cites many of
the reasons presented in connection with Example 4. Compare Pet. 14
(“Such a combination would have been nothing more than applying
Bareau’s specification for a brighter lens system for smaller pixel image
sensors, according to known lens design and modification methods”) with
Pet. 53 (both citing Ex. 1017, 172). Petitioner also follows the Sasián
Declaration applying well known lens design software, Zemax, to show how
f-number could be modified from f#=3.94 in Ogino Example 5 to f#=2.8
from Bareau. Pet. 54 (citing Ex. 1003, 66 (Figs. 3A and 3B (compared side
by side for F#=3.94 and F#=2.8))).
Patent Owner does not specifically dispute the argument and
supporting evidence providing reasons for combining Ogino Example 5 and
Bareau. To the extent Patent Owner argues some of Petitioner’s showing is
related to design or manufacturing issues, they are discussed below. We
find Petitioner’s argument and supporting evidence summarized above
sufficiently shows reasons for combining Ogino Example 5 and Bareau.
IPR2020-00897
Patent 10,324,277 B2
44
9. Patent Owner’s Arguments
Because independent claim 11 is similar to independent claim 1,
Patent Owner’s arguments on claims 11–17 substantially repeat the
arguments it made in response to the challenge discussed above in Section
III.F.2 for claim 1. Patent Owner states Petitioner does not consider
“manufacturing, tolerances, or system desensitization, [and that] a [person of
ordinary skill in the art] would certainly not have arrived at the lens
configuration in the First Modified Example 5,” which is Petitioner’s
“alternative 1.” PO Resp. 40–41 (citing Ex. 2001 ¶ 106).
Patent Owner argues Ogino’s lens elements as modified by Bareau to
achieve an f-number of 2.8 touch and would not be used by a person of
ordinary skill in the art. PO Resp. 41–42 (citing Ex. 2001 ¶ 109). This
argument is based on the Sasián Declaration’s Figure 4A, a “Ray Trace
Diagram” reproduced below. Id. at 42.
IPR2020-00897
Patent 10,324,277 B2
45

Ray Trace Diagram Ogino Example 5 Alternative 1.
Exhibit 1003, 122. Patent Owner alleges Exhibit 1003 annotated above
results from Dr. Sasián’s “[m]odifying Ogino’s Example 5 to achieve the
Bareau’s preferred f-number of 2.8 and using well-known lens design
software to find the best solution.” PO Resp. 41 (citing Ex. 1003 ¶ 71).
Patent Owner repeats its arguments above relating to Ogino Example 4. Id.
at 43 (citing Ex. 2001 ¶ 109).
Petitioner relies on the Sasián Reply Declaration and the Zemax
analysis, which is reproduced below. Reply 21–22.
IPR2020-00897
Patent 10,324,277 B2
46

Dr. Sasián Reply Declaration Zemax Alternative 2 Analysis.
Ex. 1037 ¶ 41. Petitioner alleges alternative 2, which Patent Owner
identifies as “Second Modified Example 5” (PO Resp. 40), meets Dr.
Milster’s “manufacturing” requirements. Reply 25. Petitioner alleges
alternative 2 showing “zoomed-in ray trace of lens elements L2 and L3
above clearly shows space between these lens elements.” Id. at 22 (citing
Ex. 1037 ¶ 42). Patent Owner agrees that lenses L2 and L335 do not touch
but the tolerance is so small a person of ordinary skill would not have used
the arrangement. Sur-Reply 12 (citing Reply 21; Ex. 2012, 59:23–61:236).
Patent Owner alleges alternative 2 was not presented in the Petition or
“applied against the claims 11–19 of the ’277 patent.” Sur-Reply 12–13.
Though not stated, we understand Patent Owner to be arguing that
alternative 2 should be disregarded. We decline to do so. First, as has been
discussed exhaustively throughout this Decision, Patent Owner has not
shown how these various design and manufacturing arguments are reasons a

35 Patent Owner argues this point by referring to L4 and L5 which we find is
a mistake because the cited Reply refers to L2 and L3. Reply 21. In
addition, claim 11 recites three lenses which map to Ogino’s L2 and L3 in a
three lens assembly. Ex. 1001, 9:35–39.
36 Patent Owner mistakenly cites “Ex. 2010.”
IPR2020-00897
Patent 10,324,277 B2
47
person of ordinary skill would not have combined the references. Petitioner
has responded to these design and manufacturing arguments while
maintaining that they are not required by the claims. Reply 9–13. For
example, Petitioner relies on the Sasián Reply Declaration to show a person
of ordinary skill would have “incrementally” approached designing a lens
with appropriate spacing between lenses. Reply 3 (citing Ex. 1037 ¶ 6; Ex.
1017, 168). Patent Owner argues the incremental approach is wrong without
explanation beyond that it is a “predetermined process.” Sur-Reply 5.
Second, we find alternative 2 is proper rebuttal to Patent Owner’s arguments
that the lenses touch in alternative 1. See PO Resp. 42 (“First Modified
Example 5 . . . results in two lens elements touching”).
Both parties argue whether or not the lenses of Ogino Example 5
overlap or touch. PO Resp. 41; Reply 21. Both arguments are based on
expert testimony, which is, in turn, based on the drawings in the references.
Ex. 2001 ¶¶ 108–109; Ex. 1037 (Sasián Reply Declaration) ¶¶ 41–42. As
discussed in Section III.E.6 above, patent drawings are not intended to show
dimensions. Regardless, we find that in the alternative 2 modification the
lenses L2 and L3 do not touch. See Tr. 42:2–44:7 (the lenses “effectively”
touch); Sur-Reply 12 (agreeing L2 and L3 do not touch). Moreover, even if
L2 and L3 touch as a result of the alternative 1 modification that alone does
not undercut Petitioner’s showing that the combination would have been
obvious. See Keller, 642 F.2d at 426.
Patent Owner argues a person of ordinary skill “would have allowed
the inputs of radius of the lenses, spacing between lens surfaces and the
conic coefficients to vary.” PO Resp. 43 (citing Ex. 2001 ¶ 110). This
argument was analyzed above in connection with Example 4 of Ogino. See
Section III.E.5 above. This argument is another design and construction
IPR2020-00897
Patent 10,324,277 B2
48
argument and would not have discouraged a person of ordinary skill in the
art from making the combination.
Patent Owner argues that Dr. Sasián has provided different graphs for
relative illumination as between his declaration in Apple, Inc. v.
Corephotonics, Ltd., IPR2020-00896 and here. PO Resp. 46–47; Sur-Reply
14–15. The differences were a result of adjustments to vignetting and
different starting points. PO Resp. 47 (citing Ex. 2003,37 152:2–13). We are
not persuaded that the failure to explain why one set of inputs would be
selected over another, as Patent Owner contends, has any bearing on whether
a person of ordinary skill would have combined Bareau with Ogino Example
5. See id.
Patent Owner argues that alternative 1 of Example 5 includes
dimensions that would have been unacceptable to a person of ordinary skill
in the art. PO Resp. 47–49. Again, how a lens would actually be designed
and manufactured is a separate question from whether what is taught by the
references would not have discouraged a person of ordinary skill in the art
from making the combination.
We are also not persuaded that Petitioner is precluded from relying on
two separate modifications to Example 5 to show claim 11’s limitations. PO
Resp. 49–50. Fundamentally, Petitioner contends only the first modification
of Example 5 is necessary to show all limitations of claim 11. See Pet. 91–
95 (citing Ex. 1003, 102–103). The second modification is not required.
Patent Owner turns to claims 1–10 and 18–24. PO Resp. 50–51.
Patent Owner again argues manufacturing requirements, performance
factors, and differing results. Id. at 50–54. These arguments do not differ

37 Dr. Sasián Deposition in IPR2020-00896, taken February 19, 2021.
IPR2020-00897
Patent 10,324,277 B2
49
materially from arguments addressed above in connection with claims 11–17
and do not change our prior determination.
Patent Owner’s arguments regarding alleged hindsight are based on
“what a [person of ordinary skill in the art] would have actually done when
designing a lens.” Sur-Reply 2–3. These arguments are unpersuasive for
reasons previously stated concerning the difference between design and
manufacture and obviousness. Additional arguments from the Sur-Reply are
not relevant to the obviousness conclusion and are addressed above,
including design and manufacturing considerations (Sur-Reply 4, 12), the
design process (id. at 5–6), lenses “effectively” touching (id. at 6–7, 12),
manufacturability of Ogino Example 4 (id. at 7–9), different input data (id.
at 14–15), and the “Second Modification of Bareau” (id. at 15–16).
10. Conclusion
Petitioner has shown by a preponderance of the evidence that claims
1–24 would have been obvious over Ogino Example 5 and Bareau.
IV. ORDER38
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–24 are unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must

38 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
IPR2020-00897
Patent 10,324,277 B2
50
comply with the notice and service requirements of 37 C.F.R. § 90.2.

Claims

35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–3, 5–8 103 Ogino Example 4,
Bareau
1–3, 5–8
1–24 103 Ogino Example 5,
Bareau
1–24
Overall
Outcome
1–24
IPR2020-00897
Patent 10,324,277 B2
51
FOR PETITIONER:
Michael Parsons
Andrew Ehmke
Jordan Maucotel
HAYNES & BOONE LLP
michael.parsons.ipr@haynesboone.com
andy.ehmke.ipr@haynesboone.com
jordan.maucotel.ipr@haynesboone.com

FOR PATENT OWNER:
Neil Rubin
C. Jay Chung
RUSS AUGUST & KABAT
nrubin@raklaw.com
jchung@raklaw.com