Corephotonics, Ltd.

Patent Trials and Appeals Board

Dec 7, 2021

IPR2020-00896 (P.T.A.B. Dec. 7, 2021)

Trials@uspto.gov Paper 33
571-272-7822 Date: December 7, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC.,
Petitioner,

v.

COREPHOTONICS, LTD.,
Patent Owner.
____________

IPR2020-00896
Patent 10,317,647
____________

Before BRYAN F. MOORE, MONICA S. ULLAGADDI, and
BRENT M. DOUGAL, Administrative Patent Judges.

ULLAGADDI, Administrative Patent Judge.

JUDGMENT
Final Written Decision
All Challenged Claims Unpatentable
35 U.S.C. § 318(a)
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I. INTRODUCTION
Apple Inc. (“Petitioner”) filed a Petition to institute an inter partes
review of claims 1–12 (“the challenged claims”) of U.S. Patent No.
10,317,647 (Ex. 1001, “the ’647 patent”). Paper 2 (“Pet.”). Patent Owner
did not file a preliminary response.
We instituted trial on the challenged claims on all grounds set forth in
the Petition on December 8, 2020. Paper 7 (“Inst. Dec.”). After institution,
Patent Owner filed a Patent Owner Response (Paper 14, “PO Resp.”),
Petitioner filed a Reply to Patent Owner’s Response (Paper 21, “Pet.
Reply”), and Patent Owner filed a Sur-Reply (Paper 22, “PO Sur-Reply”).
An oral hearing was held on September 8, 2021, and a copy of the transcript
was entered in the record. Paper 32 (“Tr.”).
We have jurisdiction pursuant to 35 U.S.C. § 6. This Decision is a
Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to
the patentability of the claims on which we instituted trial. Having reviewed
the arguments and the supporting evidence, we determine that Petitioner has
shown, by a preponderance of the evidence, that claims 1–11 of the ’647
patent are unpatentable. We determine that Petitioner has not shown by a
preponderance of the evidence that claim 12 of the ’647 patent is
unpatentable.
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II. BACKGROUND
A. Related Proceedings
Petitioner and Patent Owner identify the following corresponding
district court proceeding: Corephotonics, Ltd. v. Apple Inc., No. 5:19-cv-
04809 (N.D. Cal.) (“’4809 case”). Pet. 1; Paper 5, 1.1
From the IPR2020-00897 proceeding, we are aware of a pending civil
action, Corephotonics, Ltd. v. Apple Inc., No. 5-18-cv-02555 (N.D. Cal.)
(’2555 case) that concerns a parent of the ’647 patent. The ’2555 and ’4809
cases were found related to a previously filed case in the Northern District of
California between the same parties, No. 17-cv-06457 (N.D. Cal.). See
’2555 case, Dkt. 14; ’4809 case, Dkt. 16. The parties are reminded that they
must keep the Board apprised of the status of related litigations and identify
all related administrative matters.
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 ’647 patent. See Patent Trial and
Appeal Board Consolidated Trial Practice Guide2 (Nov. 2019) at 18; see
also 84 Fed. Reg. 64,280 (Nov. 21, 2019).
The ’647 patent, along with Application No. 15/976,391 (now U.S.
Patent No. 10,330,897, “the ’897 patent”) claims priority to:

1 Patent Owner cites Corephotonics, Ltd. v. Apple Inc., No. 3:19-cv-04809-
LHK (N.D. Cal.) (Paper 5, 1), but this case number appears to reflect a
typographical error. A PACER search of Case No. 5:19-cv-04809 reveals
that Patent Owner’s complaint in that case was erroneously identified as
“Civil Action No. 3:19-cv-4809” on its cover page.
2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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Application No. 15/817,235 (now U.S. Patent No. 10,324,277, “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 U.S. Patent No. 9,568,712, “the
’712 patent”), which claims priority to
Application No. 14/932,319 (now U.S. Patent No. 9,402,032, “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.
Application No. 16/296,272 (now U.S. Patent No. 10,488,630),
which, along with Application No. 16/296,275 (now U.S. Patent No.
10,437,020) claim priority to the ’647 patent.
The following AIA trial proceedings challenge patents in the chain of
priority for the ’647 patent:
IPR2020-00878 (challenges the ’878 patent);
IPR2020-00897 (challenges the ’277 patent);
IPR2019-00030 (challenges the ’568 patent);
IPR2018-01146 (challenged the ’712 patent); and
IPR2018-01140 (challenged the ’032 patent).
B. The ’647 Patent
The ’647 patent issued on June 11, 2019, and is based on an
application filed on May 10, 2018, which claimed priority back to a
provisional application filed July 4, 2013. Ex. 1001, codes (22), (45), (60).
The ’647 patent discloses an optical lens assembly with five lens elements.
Id. at code (57). Figure 1A of the ’647 patent is reproduced below.
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Figure 1A of the ’647 patent illustrates a first
embodiment of an optical lens system.
The embodiments disclosed refer to an optical lens assembly
comprising, in order from an object side to an image side: optional stop 101;
first plastic lens element 102 with positive refractive power having a convex,
object-side surface 102a; second plastic lens element 104 with negative
refractive power having a meniscus, convex, object-side surface 104a; third
plastic lens element 106 with negative refractive power having a concave,
object-side surface 106a; fourth plastic lens element 108 with positive
refractive power having a positive meniscus with a concave, object-side
surface marked 108a; fifth plastic lens element 110 with negative refractive
power having a negative meniscus with a concave, object-side surface 110a.
Id. at 3:25–42.
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In Table 1, reproduced below, the ’647 patent discloses radii of
curvature, R, for the lens elements, lens element thicknesses and distances
between each of the lens elements, as well as a refractive index, Nd, for each
lens element.
Table 1 of the ’647 patent set forth optical
parameters for the optical lens assembly.
The ’647 patent discloses that
[T]he distances between various elements (and/or surfaces) are
marked “Lmn” (where m refers to the lens element number, n=1
refers to the element thickness and n=2 refers to the air gap to the
next element) and are measured on the optical axis z, wherein the
stop is at z=0. Each number is measured from the previous
surface. Thus, the first distance -0.466 mm is measured from the
stop to surface 102a, the distance L11 from surface 102a to
surface 102b (i.e. the thickness of first lens element 102) is 0.894
mm, the gap L12 between surfaces 102b and 104a is 0.020 mm,
the distance L21 between surfaces 104a and 104b (i.e. thickness
d2 of second lens element 104) is 0.246 mm, etc. Also, L21=d2,
and L51=d5.
Id. at 4:16–29.
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C. Challenged Claims
Petitioner challenges claims 1–12 of the ’647 patent. Claims 1 and 8
are independent. Claim 1 is reproduced below.
1. An optical lens assembly comprising, in order from an
object side to an image side:
a) a first lens element L1 with positive refractive power, a
focal length f1;
b) a second lens element L2 with negative refractive power
and a focal length f2 and having a meniscus shape with
convex object-side surface;
c) a third lens element L3 with negative refractive power and
a focal length f3;
d) a fourth lens element L4; and
e) a fifth lens element L5, wherein 1.2×|f3|>|f2|>1.5×f1,
wherein the lens assembly has an effective focal length
(EFL), wherein a lens system that includes the lens assembly
plus a window positioned between the fifth lens element and
an image plane has a total track length (TTL) of 6.5
millimeters or less and wherein the lens assembly has a ratio
TTL/EFL<1.0.
Ex. 1001, 8:22–39.
D. Asserted Grounds of Unpatentability
Petitioner challenges claims 1–12 as follows. See Pet. 9–10. In
support, Petitioner relies on the First and Second Declarations of Dr. José
Sasián (Exs. 1003, 1037). Patent Owner supports its briefing with the
Declaration of Dr. Tom D. Milster (Ex. 2001).
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Claim(s)
Challenged
35 U.S.C. §3 Reference(s)/Basis
1–3, 5 103 Iwasaki4
1, 4 103 Ogino5 and Chen II6
2, 3, 5, 8–11 103 Ogino, Chen II, and Bareau7
6 103 Ogino, Chen II, Bareau, and
Kingslake8
7 103 Hsieh9 and Beich10
12 103 Chen11, Iwasaki, and Beich
III. ANALYSIS
A. Principles of Law
A claim is unpatentable under 35 U.S.C. § 103 if the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said

3 Because the application leading to the ’647 patent was filed after
March 16, 2013, the effective date of the Leahy Smith America Invents Act,
Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), patentability is governed
by the post-AIA version of 35 U.S.C. § 103.
4 U.S. Patent No. 9,678,310 B2 to Iwasaki et al. (Ex. 1009, “Iwasaki”).
5 U.S. Patent No. 9,128,267 B2 to Ogino et al. (Ex. 1005, “Ogino”).
6 U.S. Patent No. 8,233,224 B2 to Chen (Ex. 1008, “Chen II”).
7 Jane Bareau et al., “The Optics of Miniature Digital Camera
Modules,” SPIE Proceedings Volume 6342, International Optical
Design Conference 2006, (2006), available at
https://doi.org/10.1117/12.692291 (Ex. 1012, “Bareau”).
8 Rudolf Kingslake, Optics in Photography (1992) (Ex. 1013, “Kingslake”).
9 U.S. Patent No. 9,864,171 B2 to Hsieh et al. (Ex. 1025, “Hsieh”).
10 William S. Beich et al., “Polymer Optics: A manufacturer’s
perspective on the factors that contribute to successful programs,”
SPIE Proceedings Volume 7788, Polymer Optics Design,
Fabrication, and Materials (August 12, 2010), available at
https://doi.org/10.1117/12.861364 (Ex. 1007, “Beich”).
11 U.S. Patent No. 10,324,273 B2 to Chen et al. (“Chen”).
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subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and (4) when in evidence, objective evidence
of nonobviousness, i.e., secondary considerations. See Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966).
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes
review petitions to identify “with particularity . . . the evidence that supports
the grounds for the challenge to each claim”)). The burden of persuasion
never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing
Corp. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing
the burden of proof in an inter partes review). Furthermore, Petitioner
cannot satisfy its burden of proving obviousness by employing “mere
conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364,
1380 (Fed. Cir. 2016).
B. Level of Ordinary Skill in the Art
Petitioner contends:
[A] Person of Ordinary Skill in the Art (“POSITA”) would
include someone who had, at the priority date of the ’647 Patent
(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. Such a
person would have had experience in analyzing, tolerancing,
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adjusting, and optimizing multi-lens systems for manufacturing,
and would have been familiar with the specifications of lens
systems. In addition, a POSITA would have known how to use
lens design software such as Code V, Oslo, or Zemax, and would
have taken a lens design course. Lack of work experience can be
remedied by additional education, and vice versa.
Pet. 7 (citing Ex. 1003 ¶¶ 19, 20). Patent Owner indicates that it “does not
disagree with Dr. Durand’s definition of a POSITA.” PO Resp. 11 (citing
Ex. 2001 ¶ 20).
We determine that the level of ordinary skill in the art proposed by
Petitioner is consistent with the ’647 patent and the asserted prior art. The
findings and conclusions set forth in this Decision are based on this
definition proposed by Petitioner.
C. Claim Construction
For inter partes reviews filed on or after November 13, 2018, we
apply the same claim construction standard used by Article III federal courts
and the ITC, both of which follow Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005) (en banc), and its progeny. 37 C.F.R. § 42.100(b) (2019).
Accordingly, we construe each challenged claim of the ’647 patent to
generally have “the ordinary and customary meaning of such claim as
understood by one of ordinary skill in the art and the prosecution history
pertaining to the patent.” Id.
Petitioner notes that we construed “effective focal length” (EFL) as
the focal length of a lens assembly in the IPR2018-01140 proceeding. Pet.
8–9 (citing Apple Inc. v. Corephotonics Ltd., IPR2018-01140, Paper 37, 10–
18 (PTAB Dec. 3, 2019)). Petitioner notes that we construed “total track
length” (TTL) as 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
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sensor, and an image plane corresponding to either the electronic sensor or
film sensor. Id.
We not discern a dispute between the parties regarding these claim
terms (EFL and TTL) or any other term or limitation and as such, we need
not expressly construe this limitation to resolve the controversy before us.
See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are
in controversy, and only to the extent necessary to resolve the controversy.’”
(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999))).
D. Obviousness over Iwasaki
Petitioner contends that claims 1–3 and 5 are unpatentable as obvious
under 35 U.S.C. § 103 over Iwasaki. Pet. 12–23. For the reasons that
follow, we determine that Petitioner establishes unpatentability of
independent claim 1 and dependent claims 2, 3, and 5 over Iwasaki by a
preponderance of the evidence. Patent Owner does not dispute this
challenge.
1. Overview of Iwasaki
Iwasaki discloses “a fixed focus imaging lens for forming optical
images of subjects” designed for use in portable devices including smart
phones and mobile devices to meet a “demand for miniaturization of the
entirety of the photography devices” and “high resolution and high
performance.” Ex. 1009, 1:18–26, 1:36–41. Iwasaki concerns an imaging
lens including, in order from an object side, the following lenses: first lens
L1 that has a positive refractive power; second lens L2 that has a negative
refractive power; third lens L3 that has a negative refractive power; fourth
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lens L4 having a positive refractive power; fifth lens L5 that has a positive
refractive power; and sixth lens L6 having a negative refractive power. See
id. at 5:60–67. Figure 4 of Iwasaki is reproduced below.

Figure 4 of Iwasaki illustrates lenses in an
arrangement according to an embodiment of the
invention.
Figure 4 is a sectional diagram that illustrates a fourth example of the
configuration of an imaging lens according to an embodiment of the
invention. Id.; see id. at 4:9–12.
2. Independent Claim 1
[1.0] “An optical lens assembly comprising, in
order from an object side to an image side:”
Petitioner contends Iwasaki discloses imaging lens L including optical
lens elements arranged “in order from the object side to the image side. . . .”
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Pet. 14 (quoting Ex. 1009, 5:60–6:3). Petitioner points primarily to Example
4, as depicted in Figure 4, reproduced above. Id. (citing Ex. 1009, Fig. 4).12
[1.1] “a) a first lens element L1 with positive
refractive power, a focal length f1;”
[1.2] “b) a second lens element L2 with negative
refractive power and a focal length f2 and having a
meniscus shape with convex object-side surface;”
[1.3] “c) a third lens element L3 with negative
refractive power and a focal length f3;”
Petitioner contends Iwasaki discloses these limitations because,
“[e]xample 4 includes ‘a first lens L1 having a positive refractive power, a
second lens L2 having a negative refractive power, [and] a third lens L3
having a negative refractive power . . . .’” Pet. 15 (quoting Ex. 1009, 5:62–
65) (alterations in the original) (emphasis omitted). Iwasaki specifies optical
parameters, in Table 9, for the lenses depicted in Example 4. Lens L1 is
shown as having a focal length (f1) of 2.50 mm. Id. (citing Ex. 1009, 17:
54–62; Ex. 1004, 30). Table 9 of Iwasaki is reproduced below.

12 We need not determine whether the preamble is limiting because
Petitioner shows sufficiently that it is satisfied by the prior art.
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Table 9 of Iwasaki discloses optical parameters for
the lenses in each of its examples.
The focal lengths of lenses L2 and L3 are not expressly disclosed in
Iwasaki, but Petitioner contends the focal lengths of these lenses can be
calculated by using the optical data for each lens and the “lens maker’s
equation.” Pet. 15. According to Petitioner,
[T]he focal lengths of L2 and L3 can be calculated by using the
optical data for each lens and the commonly known “lens
maker’s equation,” provided in Born (Ex.1010):
𝑓𝑓 = −
𝑛𝑛𝑟𝑟1𝑟𝑟2
(𝑛𝑛 − 1)[𝑛𝑛(𝑟𝑟1 − 𝑟𝑟2) − (𝑛𝑛 − 1)𝑡𝑡]

where, “f is the focal length, n is the index of refraction, r1 and r2
are the curvature of the two surfaces of lens, and t is the axial
thickness of the lens.”
Id. at 15–16 (citing Ex. 1010, 162).13
Petitioner’s annotated version of the Table 7 of Iwasaki is
reproduced below and shows from where the optical data for each
surface of lenses L2 and L3 is obtained.

13 Max Born et al., Principles of Optics, 6th Ed. (1980) (Ex. 1010, “Born”).
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.
Petitioner contends that using the values from Iwasaki’s Table 7 in the lens
maker’s equation yields “f2=-5.886 mm and f3=-82.221 mm.” Pet. 17.
Petitioner also contends that, “[a] POSITA would have understood, as
observed in Fig. 4, that L2 has a meniscus shape that is convex toward the
object-side because the radii of curvature for L2’s surfaces (surfaces 4 and
5) are both positive, meaning that the object-side is convex and the image-
side is concave.” Id. (citing Ex. 1003, 31–32; Ex. 1010, Fig. 4.15).
[1.4] “d) a fourth lens element L4; and”
[1.5] “e) a fifth lens element L5,
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[1.6] “wherein 1.2×|f3|>|f2|>1.5×f1,”
[1.7] “wherein the lens assembly has an effective
focal length (EFL),”
[1.8] “wherein a lens system that includes the lens
assembly plus a window positioned between the fifth
lens element and an image plane
[1.9] “has a total track length (TTL) of 6.5
millimeters or less and”
[1.10] “wherein the lens assembly has a ratio
TTL/EFL<1.0.”
Petitioner contends that Iwasaki discloses that Example 4 includes a
fourth lens L4 having a positive refractive power and a fifth lens L5 having a
positive refractive power. Pet. 17 (quoting Ex. 1009, 5:63–66; Ex. 1003,
35–36). As discussed above, Petitioner also contends “f1 is about 2.50 mm,
f2 is -5.886 mm, and f3 is -82.221 mm, thus meeting the claimed expression
1.2×|f3|>|f2|>1.5×f1.” Id. at 18.
Petitioner contends that Example 4 includes, “a cover glass (‘CG’)
element (i.e., window) positioned between the lens assembly, including the
L5 lens element, and the image plane.” Id. Petitioner further contends a
POSITA would have understood the language “positioned between the
fifth lens element and an image plane,” to be broad enough to encompass
Iwasaki’s lens system because Iwasaki’s lens elements are positioned
between the fifth lens element and the image plane. Id. at 20 (citing Ex.
1003, 39). Petitioner cites Table 7 of Iwasaki as disclosing a TTL of 3.89
mm. Id. (citing Ex. 1009, Table 7). Petitioner also cites Example 4 of
Iwasaki as disclosing an EFL of 4.00 mm and a TTL of 3.89 thus, meeting
the claimed ratio of TTL/EFL<1.0. Id. at 21 (citing Ex. 1003, 40–41).
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Having reviewed the cited evidence and Petitioner’s contentions, we
determine that Petitioner’s contentions and Dr. Sasián’s supporting
testimony are sufficiently supported by the cited portions of Iwasaki and that
Iwasaki teaches each of the limitations of claim 1 and its preamble. Patent
Owner does not dispute Petitioner’s showing. For the foregoing reasons, we
are persuaded that Petitioner establishes the unpatentability of claim 1 over
Iwasaki by a preponderance of the evidence.
3. Dependent Claims 2, 3, and 5
Claim 2 recites “[t]he optical lens assembly of
claim 1, wherein the lens assembly has a f-number
F#< 2.9.”
According to Petitioner, Iwasaki’s Example 4, specified in Table 7,
discloses Fno=2.8. Pet. 21 (citing Ex. 1009, Table 7).
Claim 3 recites “[t]he lens assembly of claim 2,
wherein the TTL is equal or smaller than 6.0 mm.”
Petitioner contends that Iwasaki’s Example 4, specified in Table 7,
has a TTL of 3.89 mm, which is less than 6.0 mm. Pet. 21 (citing Ex. 1003,
42); see Ex. 1009, Table 7.
Claim 5 recites “[t]he lens assembly of claim 1,
wherein lens element L1 has a concave image-side
surface.”
Petitioner contends Example 4 shows L1 lens has a meniscus shape.
Pet. 22. Also, Petitioner contends, “[a] POSITA would have understood []
that L1 is meniscus, convex toward the object-side because the radii of
curvature for L1’s surfaces (Ri columns for surfaces 2 and 3 in Table 7) are
both positive, meaning that the object-side is convex and the image-side is
concave.” Pet. 22–23 (citing Ex. 1003, 42–43; Ex. 1009, Fig. 4; Ex. 1010,
Fig. 4.15).
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Having reviewed the cited evidence and Petitioner’s contentions, we
determine that Petitioner’s contentions and Dr. Sasián’s supporting
testimony are sufficiently supported by the cited portions of Iwasaki and that
Iwasaki teaches the limitations recited in claims 2, 3, and 5. As set forth
above, Patent Owner does not dispute Petitioner’s showing. For the
foregoing reasons, we are persuaded that Petitioner establishes the
unpatentability of claims 2, 3, and 5 over Iwasaki by a preponderance of the
evidence.
E. Obviousness over Ogino and Chen II
Petitioner contends that claims 1 and 4 are unpatentable as obvious
under 35 U.S.C. § 103 over Ogino and Chen II. Pet. 23–46. For the reasons
that follow, we determine that Petitioner establishes unpatentability of
independent claim 1 and dependent claim 4 over Ogino and Chen II by a
preponderance of the evidence.
1. Overview of Ogino
Ogino relates to an imaging lens substantially consisting of, in order
from an object side, five lenses: a first lens (L1) that has a positive refractive
power and has a meniscus shape which is convex toward the object side; a
second lens (L2) that has a biconcave shape; a third lens (L3) that has a
meniscus shape which is convex toward the object side; a fourth lens (L4)
that has a meniscus shape which is convex toward an object side; and a fifth
lens (L5) that has a negative refractive power and has at least one inflection
point on an image side surface. See Ex. 1005, 2:4–13. Figure 6 of Ogino is
reproduced below.
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See id. at 4:9–11.
2. Overview of Chen II
Chen II concerns an imaging lens system including, in order from the
object side to the image side: a first lens element (100) with positive
refractive power having a convex object-side surface; a second lens element
(110) with negative refractive power; a third lens element (120) having a
concave image-side surface; a fourth lens element (130) with positive
refractive power; a fifth lens element (140) with negative refractive power
having a concave image-side surface, at least one surface thereof being
provided with at least one inflection point. Ex. 1008, 1:36–43. Figure 1 of
Chen II is reproduced below:
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3. Independent Claim 1
[1.0] “An optical lens assembly comprising, in
order from an object side to an image side:”
Petitioner contends “Ogino’s Example 5 with meniscus L2 renders
[the preamble] obvious because as taught in Ogino, it is still ‘[a]n imaging
lens substantially consists of, in order from an object side, five lenses ….’”
Pet. 36 (citing Ex. 1005, code (57)).14 We are persuaded that Ogino
expressly depicts and discloses an optical lens assembly with an object side

14 We need not determine whether the preamble is limiting because
Petitioner shows sufficiently that it is satisfied by the prior art.
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and image side and thus discloses the subject matter of the preamble [1.0]
independent claim 1. Ex. 1005, code (57), Fig. 5.
[1.1] “a) a first lens element L1 with positive
refractive power, a focal length f1;”
[1.2] “b) a second lens element L2 with negative
refractive power and a focal length f2 and having a
meniscus shape with convex object-side surface;”
[1.3] “c) a third lens element L3 with negative
refractive power and a focal length f3;”
[1.4] “d) a fourth lens element L4; and”
[1.5] “e) a fifth lens element L5,”
Petitioner contends “Example 5 includes “five lenses [including] a
first lens that has a positive refractive power…, a second lens …, [and] a
third lens …, a fourth lens…; and a fifth lens ….” which are shown in
Petitioner’s annotated version of Ogino’s Figure 5 below and are labeled
below.” Pet. 39 (citing Ex. 1005, code (57)) (emphasis omitted) (second
alteration in original).

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Petitioner’s Annotated Version of Ogino’s
Example 5. Id.
Petitioner further contends that “a POSITA would have found it
obvious to modify [Ogino’s] L2 lens from biconcave to meniscus” “by
applying Chen II’s teaching of a meniscus shape for [its] L2 lens, as Chen II
shows no vignetting and, as observed above, the vignetting in Ogino starts at
the second lens.” Id. at 35, 39 (Ex. 1003 ¶ 67; Ex. 1012, 3). Petitioner
presents a Zemax ray trace diagram and accompanying prescription data
depicting its modification to Ogino’s Example 5 (i.e., modifying Ogino’s
biconcave L2 lens to have, instead, a meniscus shape). Id. at 39 (citing Ex.
1003, 61). Petitioner contends that Ogino’s unmodified Example 5 has
f1=2.068 mm, f2=-3.168 mm, and f3=-6.926 and that the negative sign of f2
and f3 indicate that that lens L1 has a positive refractive power and lenses L2
and L3 have negative refractive powers. Id. at 41. Petitioner contends that
its prescription data for Ogino’s Example 5 as modified with Chen II’s
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meniscus shape for lens L2 results in f1=2.384 mm, f2=-5.525 mm, and f3=-
6.952 mm, which also indicate that lens L1 has a positive refractive power
and lenses L2 and L3 have negative refractive powers. Id.
We are persuaded that Ogino discloses five lens elements, L1 through
L5, in which lens L1 has a positive refractive power. Ex. 1005, 7:28–31,
Table 9. Ogino further discloses that each of the lenses has a corresponding
focal length f1–f5. Id. at 3:17–21. Chen II discloses a second lens having a
meniscus shape with convex object-side surface. Ex. 1008, Fig. 1.
According to Petitioner’s Zemax diagrams, modifying the shape of Ogino’s
second lens L2 in Example 5, which is biconcave, with that of Chen II’s
second lens results in focal lengths of f1=2.384 mm, f2=-5.525 mm, and
f3=-6.952 mm, which is supported by the corresponding prescription data
and ray trace diagram explained by Dr. Sasián. Pet. 40 (citing Ex. 1003, 63,
Appendix, Figs. 2A, 2D); see Ex. 1003, 63. Petitioner also points to values
from Ogino’s Table 13––from which f1=2.068 mm, f2=-3.168 mm, and f3=-
6.926 mm are derived by Dr. Sasián––and contends that unmodified Ogino’s
Example 5, prior to modification, indicates that lens L1 has a positive
refractive power and that lens L2 and L3 have negative refractive powers.
Pet. 41; Ex. 1003, 62–63. As Petitioner’s derived values and calculated
values for f2 and f3 are negative, we are persuaded that, in modified and
unmodified Example 5, lens L2 and lens L3 have negative refractive powers
in and that, as the derived and calculated value for f1 is positive, lens L1 has
a positive refractive power. Id.
Accordingly, we are persuaded that the combination of Ogino and
Chen II teaches limitations [1.1] through [1.5].
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We address Petitioner’s motivation to combine below in Section
III.E.3.a.
[1.6] “wherein 1.2×|f3|>|f2|>1.5×f1,”
Petitioner contends that “Example 5 with meniscus L2 renders [sic]
claimed expression.” Id. at 41 (citing Ex. 1003, 65–66). In particular,
Petitioner contends that unmodified, “original Example 5 has f1=2.068 mm,
f2=-3.168 mm, and f3=-6.926 mm and satisfies the claimed expression: 1.2 ×
|−6.926𝑚𝑚𝑚𝑚| > |−3.168𝑚𝑚𝑚𝑚| > 1.5 × 2.068𝑚𝑚𝑚𝑚” with the following values:
“8.3112𝑚𝑚𝑚𝑚 > 3.168𝑚𝑚𝑚𝑚 > 3.102𝑚𝑚𝑚𝑚.” Id. (emphasis omitted). Petitioner
further contends that “Example 5 modified . . . also satisfies the claimed
expression:” with f1=2.384 mm, f2=-5.525, and f3=-6.952 mm, which are
input to the claimed expression “1.2 × |−6.952𝑚𝑚𝑚𝑚| > |−5.525𝑚𝑚𝑚𝑚| > 1.5 ×
2.384 𝑚𝑚𝑚𝑚” evaluating to “8.342 mm > 5.525 mm > 3.576 mm.” Id.
(emphasis added).
We are persuaded that Petitioner explicitly provides detailed
calculations to show how its f1, f2, and f3 values are derived for unmodified
Example 5 and how its f1, f2, and f3 values are calculated (by Zemax) for
Ogino’s Example 5 modified with the meniscus shape of Chen II’s second
lens L2, and how both sets of focal lengths satisfy the claimed condition
“1.2×|f3|>|f2|>1.5×f1.” Pet. 41; Ex. 1003, 62–63, Appendix, Fig. 2D. As
such, we are persuaded that the combination of Ogino and Chen II teaches
limitation [1.6].
[1.7] “wherein the lens assembly has an effective
focal length (EFL),”
[1.8] “wherein a lens system that includes the lens
assembly plus a window positioned between the fifth
lens element and an image plane”
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[1.9] “has a total track length (TTL) of 6.5
millimeters or less and”
[1.10] “wherein the lens assembly has a ratio
TTL/EFL<1.0.”
Petitioner contends that “[t]he effective focal length (EFL) of
[unmodified] Example 5 is represented in Table 9 as EFL=5.956” and
modified Example 5 “with meniscus L2 has an EFL=5.460 mm.” Id. at 41–
42 (citing Ex. 1005, Table 9; Ex. 1003, Appendix, 67, Fig. 2A); see Ex.
1003, 66 (Dr. Sasián’s analysis as to the claimed EFL).
Petitioner further contends that “Ogino defines the CG element as ‘a
flat-plate-shaped optical member, such as a cover-glass for protecting an
imaging surface and an infrared ray cut filter.” Id. at 43 (citing Ex. 1003,
67, Appendix, Fig. 2A; Ex. 1005, 5:58–60) (emphasis omitted); compare Ex.
1005, Table 9 (surface 12), with Ex. 1001, Tables 1, 3, 5 (surface 12).
Petitioner contends that in unmodified Ogino’s Example 5, “[t]he sum
of D1-D13 is 5.273 mm as confirmed by Zemax” and that “Example 5
modified with meniscus L2 maintains this TTL.” Id. at 44 (emphasis
omitted) (citing Ex. 1003, Appendix, Fig. 1A, Fig. 2A). Petitioner
particularly contends that its modified Example 5 with meniscus-shaped
second lens L2 meets the limitation that “TTL/EFL<1.0” because “the
EFL=5.460 mm (see [1.7]), the TTL=5.273 mm (see [1.7]), and the claimed
ratio of TTL/EFL (5.273/5.460) yields 0.966, which is less than 1.0.” Id. at
44–45 (citing Ex. 1003, Appendix, Fig. 1A, Fig. 2A).
We have reviewed the cited portions of Ogino and Chen II, Dr.
Sasián’s testimony, along with Zemax ray trace diagrams and associated
prescription data, and we are persuaded that they support Petitioner’s
contentions and calculations. See e.g., Ex. 1003, 65–71. As such, we are
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persuaded that the combination of Ogino and Chen II teaches limitations
[1.7] through [1.10].
a) Petitioner’s Motivation to Combine
Petitioner contends that “a POSITA would have found it obvious to
modify [Ogino’s] L2 lens from biconcave to meniscus” and presents a
Zemax ray trace diagram and accompanying prescription data depicting and
describing the modification to Ogino’s Example 5. Pet. 28–36 (citing Ex.
1003, 61–68); id. at 39.
More particularly, Petitioner contends that “[a] POSITA would have
been aware of lens specifications related to mobile phones, as evidenced by
Bareau[,] including acceptable values for relative illumination, ray
aberration, and the chief ray angle (CRA) at the sensor in modern mobile
phone applications.” Id. at 26 (citing Ex. 1003 ¶ 55; Ex. 1012, 3). Petitioner
explains that “[a] POSITA also would have been aware, as Ogino
recognizes, of the importance of reducing ‘deterioration in the light
receiving efficiency and occurrence of color mixture due to increase of
incident angle’ to ‘achieve optimum optical performance.’” Id. (citing Ex.
1003 ¶ 55; Ex. 1005, 7:21–25). Petitioner contends that a “POSITA would
have been motivated to modify Example 5 to achieve benefits like reduced
vignetting, improve[d] . . . relative illumination, [and] reduce[d] aberration
to produce brighter, higher quality images,” and further, that “a POSITA
would have found it obvious to combine Chen II’s meniscus second lens that
does not cause vignetting with Ogino’s Example 5 lens system to provide
the same benefit seen in Chen II—of decreased vignetting and ray
aberration—in Ogino’s similar five-lens system.” Id. (citing Ex. 1003 ¶ 57).
Petitioner further explains that
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[w]hile vignetting may help to reduce undesirable aberrations, it
also reduces the relative illumination of the lens system. Such
reduction may be beneficial for some cases but for lens systems
designed for cellular telephones, like in Ogino and Chen II, it is
desirable for relative illumination to be greater than 50%.
Ogino’s Example 5 fails this because, as shown in the Zemax
chart below, the relative illumination is below 50% at the edge
of the field of view. Consequently, a POSITA would have
looked at also improving the relative illumination of Ogino’s
Example 5 . . . .”
Pet. 30–31 (citing Ex. 1010, 188; Ex. 1012, 3; Ex. 1003 ¶ 62, Appendix,
Figs. 1A and 1B).
b) Analysis of Petitioner’s Motivation to Combine
We are persuaded that Petitioner’s motivation to combine Ogino and
Chen II is supported by sufficient rational underpinnings with a reasonable
expectation of success. In the Final Written Decision in the IPR2018-01140
proceeding, we found that a POSITA would have been motivated to modify
Ogino’s Example 6 by changing second lens L2 that has a biconcave shape
to the meniscus shape of Chen II’s second lens. IPR2018-01140, Paper 37
(“1140FWD”) at 36–38. In the 1140FWD, we found that “in view of
Ogino’s low relative illumination at the edge of the field, the skilled artisan
‘would have been motivated to adjust the Ogino Example 6 lens system’ in
view of Chen II ‘to reduce vignetting, improve the relative illumination,
reduce aberration, and reduce the CRA.’” Id. We further found that “[e]ven
if Ogino suggests there are benefits to having the second lens biconcave, a
person of ordinary skill can weigh those benefits against the benefits of
having a meniscus shape.” Id. at 36 (citing Winner Int’l Royalty Corp. v.
Wang, 202 F.3d 1340, 1349, n.8 (Fed. Cir. 2000) (competing benefits do not
weigh against obviousness, rather, the benefits, both lost and gained, in
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combining the teachings of the prior art should be weighed against one
another). The Federal Circuit affirmed the 1140FWD on October 6, 2021.
Corephotonics, Ltd. v. Apple Inc., No. 2020-1424, 2021 WL 4944467,
October 25, 2021.
Like in the IPR2018-01140 proceeding, Petitioner proposes to modify
Ogino’s biconcave-shaped second lens L2 with the meniscus shape of Chen
II’s second lens, although in the present proceeding, Petitioner modifies
Example 5. Further, in the present proceeding, Dr. Sasián’s testimony
explains that relative illumination falls to about 40% in Ogino’s unmodified
Example 5––this figure is similar that of unmodified Ogino’s Example 6 as
discussed in the 1140FWD.15 1140FWD at 30. With respect to modifying
the shape of the second lens L2 in Ogino’s Example 5 with Chen II’s
meniscus shape, the present facts are not shown to deviate in a dispositive
fashion from the facts we cited in our 1140FWD in reaching our conclusion
as to the combination of Ogino and Chen II. As such, with respect to Ogino
and Chen II, we are not persuaded to deviate substantially from our earlier
findings and conclusions in IPR2018-01140.
Here, we are persuaded Petitioner shows, with its Zemax ray trace
diagrams, that Ogino’s Example 5 “suffers from TIR [total internal
refraction] vignetting on the second surface of the second lens [and] . . . has
aberrated rays that would need to be removed by further vignetting, thereby
causing the relative illumination at the edge of the field to fall to 40%,” and
has a CRA for the full field that is 38 degrees. Pet. 26–27 (citing 1003 ¶ 56,

15 Dr. Sasián’á testimony explains that “vignetting has been allowed by the
aperture on surface seven” and accompanying Zemax diagrams show that
this relative illumination falls to about 40%.” Ex. 1003, Appendix, Fig. 1B.
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Appendix, 1A). As such, we are persuaded that Ogino’s Example 5 has a
relatively low illumination at the edge of the field but advantageously has a
relatively “short total track length (5.273 mm) [and] low telephoto ratio
(0.885)” as Petitioner contends, and would have motivated a POSITA to
generally consider “deterioration of light receiving efficiency” in modifying
the lens assembly. Pet. 26–27 (quoting Ex. 1005, 7:21–25). We further
agree that a “POSITA would have been motivated to modify Example 5 to
achieve benefits like reduced vignetting, improve[d] [] relative illumination,
reduce[d] aberration to produce brighter, higher quality images” in view of
the similarities between Ogino’s Example 5 lens assembly and Chen II’s
Figure 1 lens assembly and because Chen II’s meniscus second lens does not
cause vignetting. Id. at 27–28 (citing Ex. 1003 ¶ 57; Ex. 1005, code (57),
Table 13, 13:3–5, 7:28–31, 7:58–8:25, 23:30–40; Ex. 1008, 6:51–7:4 (Chen
II disclosing refractive powers and surface shapes of its lens assembly)). Dr.
Sasián’s testimony and Zemax ray trace diagrams and prescription data
support Petitioner’s contentions about the benefits conferred by Petitioner’s
proposed modification to Ogino’s Example 5 with the meniscus shape of
Chen II’s L2 lens. See e.g., Ex. 1003 ¶¶ 52, 53, 61, 62, 65, 66, Appendix,
Figs. 1A, 1B, 1D, 2A, 2B, and 2D.
For the foregoing reasons, we are persuaded that Petitioner’s
motivation to combine Ogino and Chen II is supported by sufficient rational
underpinning with a reasonable expectation of success. As we set forth
above, we have reviewed the cited portions of Ogino, Chen II, Dr. Sasián’s
testimony, along with Zemax ray trace diagrams and associated prescription
data, and we are persuaded that the combination of Ogino and Chen II
teaches limitations [1.1] through [1.10] and preamble [1.0].
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Accordingly, we are persuaded that Petitioner establishes
unpatentability of claim 1 over the combination of Ogino and Chen II by a
preponderance of the evidence.
4. Dependent Claim 4
Claim 4 recites, “[t]he lens assembly of claim 1,
wherein lens element L1 has a convex image-side
surface.”
Petitioner points to its “[r]easons to combine Ogino and
Chen [II],” (see Pet. 26–36) and contends that “a POSITA would have found
it obvious to modify Example 5 based on Chen II to make L2 meniscus.” Id.
at 45 (citing Ex. 1003, 72, Appendix Fig. 2A). Petitioner contends that “[i]n
modified Example 5, L1 has an object-side-radius of 1.648 and an image-
side-radius of -5.409, and are therefore convex on both sides” and that
“[t]hese were adjusted due to software optimization for better perform[ance]
with the meniscus L2 lens, thereby yielding the predicable result of the
image-side surface changing from concave to convex.” Id. at 45–46 (citing
Ex. 1003, 72, Appendix Fig. 3D).
We have reviewed the cited portions of Ogino, Chen II, Dr. Sasián’s
testimony, and the accompanying Zemax diagrams and we are persuaded
that Petitioner establishes that the combination of Ogino and Chen II teaches
the limitation recited in claim 4. Petitioner apparently relies on the same
motivation to combine Ogino and Chen II as it does for independent claim 1,
which we determined above is supported by sufficient rational underpinning
with a reasonable expectation of success. See Pet. 26–36; supra § III.E.3.b.
Accordingly, we are persuaded that Petitioner establishes unpatentability of
claim 4 over the combination of Ogino and Chen II by a preponderance of
the evidence.
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5. Patent Owner’s Arguments with Respect to Claims 1 and 4
First, Patent Owner contends that “Chen II does not discuss
vignetting, nor does it discuss the advantages of L2 being meniscus with
respect to vignetting” because “[t]he fact that the front surface of L2 of
Example 1 in Chen II is convex with respect to the object has nothing to do
with vignetting.” PO Resp. 28 (citing Ex. 2001 ¶ 87). Instead, Patent
Owner contends that “[t]he vignetting in this lens is determined far away
from the center of the lens, near the edge of the L2, as shown by the arrow
from the ‘No Vignetting’ box. . . .” Id. (citing Ex. 1003 ¶ 52). Patent Owner
further contends that, “[i]n Chen II, the fact that the front surface is convex
toward the object side (+ sign) has nothing to do with vignetting, because
either a plus (+) sign or a minus (-) sign can produce effectively the same
result” because “[t]he aspheric coefficients can be adjusted in either case to
provide no vignetting.” Id. at 29 (citing Ex. 2001 ¶ 88). According to
Patent Owner, vignetting “occur[s] due to shapes of the second lenses near
their edges, which are indicated by the arrows labeled ‘Aspherics’.” Id. at
31. Second, Patent Owner also contends that “a POSITA would have
recognized how to improve performance in Example 5 of Ogino without
using Chen II.” Id. at 37.
Petitioner responds by pointing to our Final Written Decision in
IPR2018-01140 (Paper 37) in which we found that a POSITA would have
been motivated to modify the shape of the second lens L2 of Ogino’s
Example 6 with Chen II’s meniscus shape to obtain certain benefits.
1140FWD at 30. Petitioner argues that “a POSITA would have understood
that changing the radius of curvature of the object-side surface of Ogino’s
L2 lens from negative to positive (even without changing the aspherics)
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would reduce vignetting, as shown . . . in the comparison of the original
Example 5 lens with an object-side radius of -18.78836 mm and a modified
Example 5 lens with an object-side radius of +18.78836 mm, with no
changes to aspheric coefficients” and presents two new Zemax drawings in
support of its argument. Pet. Reply 3 (citing Ex. 1037 ¶ 5, Appendix, Figs.
1A, 1B) (emphasis added); see id. at 2 (citing Pet. 31–32; Ex. 1009, Fig. 1).
In its Sur-Reply, Patent Owner responds to Petitioner’s argument by
distinguishing the facts of the present proceeding with those addressed in the
1140FWD:
But that decision [in IPR2018-01140] involved combining Ogino
Example 6 with the teachings of Chen II because “Ogino’s
Example 6 lens assembly ‘has relative illumination less than
50%’ and that a person having ordinary skill in the art ‘would
have looked to improve the relative illumination of Ogino’s
Example 6.’” See IPR2018-01140, Paper 37, p. 30. The Board’s
decision regarding a different embodiment of Ogino modified by
Chen II for different reasoning is not binding on the Board or the
parties.
* * *
Apple provides a modified Example 5 lens which changes
the radius of curvature of the object-side lens from negative to
positive to allegedly show that vignetting would be the same.
First, this design must be rejected, as it is a new design and new
evidence not previously offered by Apple in its Petition. Second,
this new design has not been applied against the claims of the
‘647 patent. But even if this new modification is accepted, it does
not address Patent Owner’s arguments regarding vignetting.
PO Sur-Reply 4, 5. Patent Owner further contends that “[e]ven with the
changes to Ogino[’s] Example 5, the decrease in vignetting is not due Chen
II, as Example 1 in Chen II displays the same near-vertical-line shape
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characteristic near the center of the first surface of the second lens.” PO
Sur-Reply 5 (citing PO Resp., 30–31; Ex. 2001 ¶ 90).
Patent Owner’s arguments distinguishing the facts of the instant
proceeding from that of the IPR2018-01140 proceeding are unavailing. In
the IPR2018-01140 proceeding, we determined that a POSITA would have
been motivated to modify the shape of the biconcave second lens L2 in
Ogino’s Example 6 with the meniscus shape of Chen II’s second lens.
1140FWD, 36–38. As we discussed above, although Petitioner relies on
Ogino’s Example 5 in this proceeding, we note that it too has a biconcave
lens that Petitioner proposes to modify with a meniscus shape from Chen II.
Further, Dr. Sasián’s testimony explains that relative illumination falls to
about 40% in Ogino’s unmodified Example 5––this figure is similar that of
Ogino’s Figure 6 as discussed in the 1140FWD.16 1140FWD at 30.
Petitioner persuasively shows that modifying Ogino’s second lens L2
in its Example 5 with the meniscus shape of Chen II’s second lens would
reduce vignetting and that the modification of the shape of Ogino’s second
lens L2 is what causes the benefit––not the aspheric coefficients, as Patent
Owner contends. See Pet. Reply 3 (citing Ex. 1037 ¶ 5, Appendix, Fig. 1A,
1B); PO Resp. 28–29, 31. Figures 1A and 1B, submitted with Dr. Sasián’s
Reply Declaration (Ex. 1037, Appendix, Figs. 1A and 1B), support
Petitioner’s argument and are properly responsive to Patent Owner’s
argument that reduced vignetting is due to aspheric coefficients instead of
the change in radius of curvature in Ogino’s lens L2. Petitioner need not

16 Dr. Sasián’s testimony explains that “vignetting has been allowed by the
aperture on surface seven” and accompanying Zemax diagrams show that
this relative illumination falls to about 40%.” Ex. 1003, Appendix, Fig. 1B.
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have submitted Figures 1A and 1B in its Petition or Dr. Sasián’s opening
Declaration because Petitioner cannot be expected to anticipate each of
Patent Owner’s potential arguments. See Dynamic Drinkware, 800 F.3d at
1379 (finding an inter partes review petitioner has both the “burden of
persuasion to prove unpatentability” and also “the initial burden of
production,” which “is a shifting burden, ‘the allocation of which depends
on where in the process of trial the issue arises.’ The burden of production
may entail ‘producing additional evidence and presenting persuasive
argument based on new evidence or evidence already of record’”).
We consider Patent Owner’s argument that, in Petitioner’s proposed
combination, “the decrease in vignetting is not due Chen II, as Example 1 in
Chen II displays the same near-vertical-line shape characteristic near the
center of the first surface of the second lens” unavailing as we consider the
ray trace diagrams presented in its Petitioner’s Reply to support Petitioner’s
argument and to be more credible and more precise than Patent Owner’s
visual inspection of the surfaces of Chen II’s lenses. See PO Sur-Reply 5
(citing PO Resp., 30–31; Ex. 2001 ¶ 90).
Third, Patent Owner contends that “[w]hen designing and improving
an optical lens assembly, a POSITA would allow almost all of the
dimensions and inputs to vary” instead of “[m]aking a particular set of
dimensions static (i.e., set and unchanging in an optical design software)”
because doing so “would limit the results and prevent a POSITA from
obtaining a locally best result.” PO Resp. 44 (citing Ex. 2001 ¶ 103). Patent
Owner explains that “a POSITA would have allowed the inputs of radii of
the lenses, spacings between lens surfaces and the conic coefficients to vary”
instead of varying “only the radius for surfaces 1, 2 and 5” because doing so
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“would permit better performance to be obtained during the design process.”
Id. at 46 (citing Ex. 2001 ¶ 109; Ex. 2003, 135:8–22). According to Patent
Owner, “[n]one of the other surface radius were allowed to vary, nor were
the distances between surface or conic constants allowed to vary, as none
have a ‘V’ next to the entries.” Id.; compare Ex. 1003, 150 (Fig. 2D), with
Ex. 1005, Table 9, 21:10–35); Ex. 2001 ¶ 110; PO Sur-Reply 5–6 (arguing
that Dr. Milster followed a step-wise process to improve Ogino’s Example 5
without Chen II by allowing small changes to many parameters at the same
time). Accordingly, Patent Owner contends, that “Petitioner’s process
would have been contrary to a POSITA’s goal of improving performance.”
PO Resp. 46 (emphasis omitted).
Petitioner responds that “keeping certain variables constant, such as
lens spacing, while varying other parameters, is precisely the approach a
POSITA would have taken.” Pet. Reply 5 (citing Ex. 1037 ¶ 9; Ex. 1017
(Fischer), 168 (disclosing that to improve a lens design,“each variable is
changed a small amount, called an increment, and the effect to performance
is then computed”)).17 Petitioner contends that “Dr. Milster took a similar
gradual ‘step-wise process’ in modifying lenses.” Id. (citing Ex. 1028, 21:6–
18).
Petitioner has the better position. Petitioner has persuasively
explained why a POSITA guided by Ogino would look to Chen II in order to
address vignetting and begin with Example 5, with a minimum of other
changes to the design by following the incremental process evidenced by
Fischer. See Ex. 1017, 168–69 (disclosing an example in which each

17 Robert E. Fischer, Optical System Design (2008) (Ex. 2017, “Fischer”).
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variable is varied––individually and sequentially––by small amount, 0.05
mm. As discussed above, it is not necessary for Petitioner’s combination to
be the best or most optimal design. See PAR Pharm., Inc. v. TWI Pharm.,
Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014) (“Our precedent . . . does not
require that the motivation be the best option, only that it be a suitable option
from which the prior art did not teach away.” (emphasis omitted)); In re
Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (holding that “a particular
combination” need not “be the preferred, or the most desirable, combination
described in the prior art in order to provide motivation”). Dr. Milster’s
deposition testimony that “there’s a fairly logical sequence to go through
with designing lenses this complicated . . . you usually step through a
sequence where you gradually increase the field of view in steps . . . [y]ou
don't just do it all at once” does not support its argument that a step-wise
process involves “small changes to many parameters at the same time,” as
Petitioner contends. Ex. 1028, 20:19–31:5; PO Sur-Reply 5–6 (emphases
added).
Fourth, Patent Owner argues that “Dr. Sasián also input unmodified
Example 5 of Ogino into the Zemax software into his declaration for
IPR2020-00897, stating that he input the ‘[p]rescription data as provided in
Ogino’” yet “the relative illumination graph for differs from Fig. 1B” in the
present proceeding. PO Resp. 49 (alteration in original) (citing Ex. 1005,
Table 9; IPR2020-00897, Ex. 2005, 119); see PO Sur-Reply 9–10.
Petitioner responds that “a POSITA would have sought to improve the
relative illumination of Ogino’s Example 5 lens given either graph, and the
modified Example 5 lenses shows improvements to relative illumination.”
Pet. Reply 14 (citing Ex. 1003, 35). Petitioner further contends that “Patent
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Owner presents no evidence that the minimal difference of 10% for only a
portion of the relative illumination graph would have impacted a POSITA’s
design process or decisions.” Id. (citing 1037 ¶ 30).
The fact that Petitioner’s relative illumination graphs for the same
Example 5 of Ogino differ between proceedings does not undermine
Petitioner’s challenge because Dr. Sasián explains “that the slight difference
between the graphs is due to adjustments for vignetting.” Id. at 14–15
(citing Ex. 2003, 149:16–23). We are persuaded by Petitioner’s explanation
that “[o]ptical data describing a precise amount of vignetting is not included
in the lens prescription for [Ogino’s] Example 5 lens” and Dr. Sasián
testifies that “all the information about vignetting is contained in [Ogino’s]
drawing” and as such, “slight differences in interpreting the amount of
vignetting in the drawing may result in slightly different relative
illumination graphs.” Id. (citing Ex. 2003, 150:18–22, 151:12–13). Thus,
we find unavailing Patent Owner’s argument that “Dr. Sasián could not
explain why he made different vignetting choices for Ogino Example 5 or
what those different vignetting choices were” “despite Dr. Sasián’s
testimony that ‘all the information about vignetting is contained in the
drawing. With the drawing, a person of skill would have known the amount
of vignetting there, because the rays are showing and it can be reproduced.’”
PO Sur-Reply 9 (citing Ex. 2003, 150:18–22; 71:12–20; 149:16–23). Dr.
Sasián’s testimony expresses the imprecise nature of determining vignetting
in Ogino, in particular by visual inspection, and provides a credible reason
why the amount of vignetting, and thus, the relative illumination, might vary
between different models developed during different proceedings.
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Fifth, Patent Owner argues that neither Petitioner nor its Expert
discuss “how a POSITA would address tolerances, manufacturing, or
ensuring system desensitization of the optical design” “that would
necessarily be considered by a POSITA” in Petitioner’s first modification to
Example 5 of Ogino with Chen II.18 PO Resp. 44–45 (citing Ex. 2001 ¶
119). Patent Owner also takes issue with the fact that Petitioner’s proposed
combination and Dr. Sasián’s modeling does not oversize lenses of the lens
assembly. Patent Owner argues that “a POSITA, when looking to combine
two references directed to cell phone cameras, would have considered
manufacturability.” PO Sur-Reply 7; see id. at 8. More particularly, Patent
Owner argues that a “POSITA, when modifying Ogino Example 5 in view
of Chen II, would not have stopped with a design that was not
manufacturable” and that “[i]nstead, the POSITA would have continued
modifying the design until it could be manufactured.” Id. at 9.
Petitioner points out that independent claim 1 and dependent claim 4
do not include any manufacturing requirements or considerations. Pet.
Reply 6. Petitioner also points out that “manufacturing criteria” such as
“center-to-edge thickness ratio only appears in claims 7 and 12 and is thus
not required of the other claims.” Id. at 7 (citing SRI Int’l v. Matsushita
Elec. Corp., 775 F. 2d 1107 (“It is settled law that when a patent claim does

18 Petitioner refers to a “first modification” to Ogino’s Example 5 to describe
modifying second lens L2 to have a meniscus shape as does Chen II’s
second lens. Petitioner also refers to a “second modification” to Ogino’s
Example 5 to describe lowering the F# of Ogino’s lens assembly. Lastly,
Petitioner refers to a “third modification” to describe increasing the distance
between, D7, between the third lens L3 and the fourth lens L4 in Ogino’s
Example 5. We adopt similar conventions.
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not contain a certain limitation and another claim does, that limitation cannot
be read into the former claim in determining either validity or
infringement.”)). Petitioner further argues that
the center-to-edge thickness ratio at issue was not
originally described in the specification of previous patents in the
family of the ’647 patent but was later added in the continuation-
in-part application that issued as U.S. Patent No. 9,857,568 (“the
’568 patent”) which was found unpatentable based on Ogino’s
Example 6. Patent Owner does not dispute that claims with this
limitation (claims 7 and 12) are not entitled to the original
priority date of the other claims. Thus, based on Dr. Milster’s
opinion, the other claims of the ’647 patent do not include any
manufacturing requirements. Accordingly, Patent Owner’s
arguments to import manufacturing considerations where they
are conspicuously absent should be rejected.
Id. at 7–8 (citing Ex. 1021, 1:6–17; IPR2019-00030, paper 32; Ex. 2002 ¶ 35
(Dr. Milster giving an effective filing date of July 4, 2013 for claims 1–6 and
8–11 and January 30, 2017 for claims 7 and 12).
It is not clear, despite Patent Owner’s attempts at clarification in its
Sur-Reply (see PO Sur-Reply 7–9), whether Patent Owner’s argument
regarding manufacturability is based on either: the design proposed by
Petitioner being inoperable for its intended purpose, or that there is no
reasonable likelihood of success in creating a manufacturable version of the
lens design offered by Petitioner, or simply that a person of ordinary skill in
the art would not be motivated to pursue the combined design.
Irrespective of which of these arguments Patent Owner intends to
make, the record does not identify any authority holding that or explaining
how manufacturability is relevant to the ultimate conclusion of obviousness.
The record also does not identify any theory of patentability based on an
alleged inability to manufacture the claimed invention. At their core, Patent
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Owner’s arguments relate to physical combinability of the references based
on manufacturing issues. 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 agree that claims 1 and 4 do not include any manufacturing
requirements or tolerances, including for center-to-edge thickness ratio,
therefore we decline to read a limitation to a manufacturability
requirement/tolerance/consideration and/or edge thickness into these claims.
Because manufacturability requirements/tolerances/considerations
regarding, for example, edge thickness are not claimed, a POSITA can have
a reasonable expectation of success in making the lens design of claim 1
without regard to manufacturability. Thus, Patent Owner’s argument does
not undermine Petitioner’s showing.
Even if we were to agree that a POSITA would have considered
manufacturability in making the combination of Ogino and Chen II, we find
persuasive Petitioner’s argument that “even the strictest manufacturing
requirements would have been balanced with other considerations” and
agree that the record does not contain evidence, “that any lens design,
including the designs in the Petition, would have been impossible to
produce.” Pet. Reply 11 (citing Ex. 1037 ¶ 22). Even if we agreed that
manufacturability is relevant to the question of patentability, Patent Owner’s
manufacturability arguments would not undermine Petitioner’s showing
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because a “POSITA would have been motivated to design lenses for other
purposes like prototyping, limited manufacturing, or experimentation”
which “would not have been limited by mass-produced injection molding as
Patent Owner argues.” Id. at 10 (citing Ex. 1037 ¶ 19) (emphasis added).
Still further, the record does not support the finding that a POSITA, having
weighed certain benefits of the proposed lens assembly against its alleged
failure to meet certain manufacturing considerations, would have found the
failure to outweigh all of the benefits.
Even if we agreed with Patent Owner that manufacturability is
relevant to the question of patentability, we credit the testimony of Dr.
Sasián that states, “[e]ven 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.”
Ex. 1037 ¶ 24 (citing Ex. 1007, 9). Dr. Sasián’s testimony that Petitioner’s
“designs would have been manufacturable even with the tolerances
suggested by Dr. Milster with manufacturing methods such as ultraprecision
diamond turning” is supported by underlying evidence––articles by Leung
(Ex. 1038) and Scheiding (Ex. 1039), and a book by Suet To (Ex. 1040).
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Ex. 1037 ¶ 22 (citing Ex. 1038, 7–8; Ex. 1039, 11; Ex. 1040, 3).19, 20, 21 As
such, we credit Dr. Sasián’s testimony about diamond turning:
“‘[c]ommonly already used for several decades, this technology can shape
sharp corners’ and ‘edge slopes up to 60°’ as well as manufacturing
tolerances ‘smaller than one part in 104 or perhaps one part in 105’ and that
thus, “a POSITA would have understood that [] [Petitioner’s] modified
designs set forth in [the] Declaration would be physically manufacturable.”
Id. Patent Owner does not dispute Dr. Sasián’s testimony about diamond
turning in its Sur-Reply. See generally PO Sur-Reply.
For the foregoing reasons, Patent Owner’s arguments do not
undermine Petitioner’s challenge to claims 1 and 4 based on Ogino and
Chen II.
F. Obviousness over Ogino, Chen II, and Bareau
Petitioner contends that claims 2, 3, 5, and 8–11 are unpatentable as
obvious under 35 U.S.C. § 103 over Ogino, Chen II, and Bareau. Pet. 46–
63. For the reasons that follow, we determine that Petitioner establishes

19 Ex. 1038 is an article entitled “Diamond turning and soft lithography
processes for liquid tunable lenses” 20 J. Micromechanics Microengineering
1 (Jan. 18, 2010) by H. M. Leung et al.
20 Ex. 1039 is an article entitled “Diamond milling or turning for the
fabrication of micro lens arrays: comparing different diamond
machining technologies” to Sebastian Scheiding et al., Proc. SPIE 7927,
Advanced Fabrication Technologies for Micro/Nano Optics and Photonics
IV, 79270N (14 February 2011), available at
https://doi.org/10.1117/12.874751.
21 Exhibit 1040 is an article entitled “Materials Characterisation and
Mechanism of Micro-Cutting in Ultra-Precision Diamond Turning” to Sandy
Suet To et. al (2018).
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unpatentability of independent claim 8 and dependent claims 2, 3, 5, and 9–
11 over Ogino, Chen II, and Bareau by a preponderance of the evidence.
1. Overview of Bareau
Bareau concerns “the design and manufacturing of consumer and
commercial imaging systems using lens elem++ents” that have millimeter-
scale diameters. Ex. 1012, 1. Bareau lists an f-number of 2.8 in its “typical
lens specifications for a ¼″ sensor format.” Id. at 3, 4.
2. Independent Claim 8
[8.0] “An optical lens assembly comprising five
lens elements, in order from an object side to an
image side:”
[8.1] “a) a first lens element L1 with positive
refractive power and a focal length f1;”
[8.2] “b) a second lens element L2 with negative
refractive power and having a meniscus shape with
convex object-side surface;”
[8.3] “c) a third lens element L3;”
[8.4] “d) a fourth lens element L4; and”
[8.5] “e) a fifth lens element L5,”
According to Petitioner, Ogino renders at least the above-quoted
limitations of claim 8 obvious for the same reasons discussed above with
respect to claim limitations [1.1]–[1.5] and preamble [1.0], in which
“Example 5 is shown to be a lens assembly with five lens elements arranged
along an optical axis.” Pet. 54 (citing Ex. 1003, 83). We are persuaded that
the combination of Ogino and Chen II (i.e., the first modification to the base
combination) teaches limitations [8.1] through [8.5] and preamble [8.0], for
the reasons discussed in Section III.E.3, except for the claimed negative
refractive power of the second lens L2 of Ogino’s Example 5 as modified by
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the first (i.e., changing to meniscus shape) and second (i.e., lowering the F#
to 2.8) modifications to Ogino’s Example 5.22 Stated differently, in this
Section, III.F.2, Petitioner explains the calculations for focal length, and thus
the sign of the refractive power, for the second lens L2 based on applying
both the first and second modifications to Ogino’s Example 5––the focal
length calculated in Section III.E.3 is based on applying only the first
modification to Ogino’s Example 5.
a) Petitioner’s Motivation to Combine
We discuss Petitioner’s motivation to combine here as it is necessary
to explain how the combination of Ogino, Chen II, and Bareau obtains a
focal length that indicates the claimed refractive power of the second lens L2
with respect to Ogino’s Example 5 as modified by Petitioner’s first and
second modifications.
Petitioner combines Ogino, Chen II, and Bareau to teach limitation
[8.10] of claim 8 which recites, “wherein a f-number F# of the optical lens
assembly is smaller than 2.9.” As to Petitioner’s motivation to combine
Ogino and Bareau for teaching claim 8, Petitioner discusses two further
modifications––a second modification to lower its F# to 2.8, and a third
modification in which the gap, D7, between Ogino’s third (L3) and fourth
(L4) lens elements, is increased, which are applied to Ogino’s Example 5 in
addition to the first modification in which the shape of Ogino’s second lens
is modified to have a meniscus shape. With respect to dependent claims 9–
11, which depend from claim 8, the first, second, and third modifications are
applied. With respect to claims 2, 3, and 5, which depend from claim 1,

22 We need not determine whether the preamble is limiting because
Petitioner shows sufficiently that it is satisfied by the prior art.
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only the first and second modifications are applied. Petitioner apparently
relies on the motivation to combine Ogino and Chen II that was discussed in
Section III.E.3 with respect to independent claim 1.
Petitioner contends that “[a] POSITA would have found it obvious to
modify Ogino’s Example 5 lens assembly based on Bareau’s specifications
for cell phone camera lenses desiring an F#=2.8 or less for ¼” and smaller
pixel image sensors” because, in order “[t]o have a competitive lens design,
a POSITA therefore would have sought to modify existing lens designs to
achieve faster f-numbers like 2.8 while still maintaining a short total track
length appropriate for thin cell phone designs.” Pet. 47–48 (citing Ex. 1003
¶¶ 74, 75). Petitioner further contends that “[a] POSITA thus would have
been aware of Bareau’s specifications for lens assemblies designed for
modern cellular telephones and particularly the importance of supporting a
faster f-number for smaller pixel sensor formats.” Id. at 48 (citing Ex. 1003
¶ 76). According to Petitioner, “modifying Ogino’s Example 5 to have an f-
number of 2.8 would have been nothing more than applying Bareau’s
teaching according to known lens design methods (as taught in Fischer
(APPL-1017)) to allow Example 5 to likewise ha[ve] a lower f-number.” Id.
(citing Ex. 1017; Ex. 1003 ¶ 76).
Petitioner contends that “[a] POSITA would have found it obvious to
lower the f-number of Example 5 whether original or modified with a
meniscus L2 lens,” the latter of which is “shown in the modified design in
Appendix Fig. 3A, working at F#=2.8 and using the L2 lens with a meniscus
shape.” Id. (citing Ex. 1003 ¶ 74, Appendix, Fig. 3A).
With respect to Bareau, Petitioner contends that “[w]hile Bareau
specifies a field of view (FOV) of 60 degrees, this would have been
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understood to be a design consideration since most cell phones at the time
used a single wide lens.” Id. at 48 (citing Ex. 1003 ¶ 77; Ex. 1005, Figs. 14,
15). According to Petitioner, “[a] POSITA designing a cell phone with both
wide and telephoto lenses using the same sensor format, (see, e.g., APPL-
1014, Fig.16), though, would have recognized that Bareau’s specifications
for low f-number and short TTL would still be highly relevant to
incorporating a telephoto lens like Example 5 since TTL dictates the
thickness of the cell phone and the f-number indicates how much light
reaches the image sensor pixels regardless of a lens’s focal length or FOV.”
Id. at 48–49 (citing Ex. 1003 ¶ 77; Ex. 1012, 3–4; Ex. 1005, Figs. 14, 15)
(emphasis added).
Petitioner further contends that
A POSITA would have understood that one way of modifying
Ogino’s Example 5 is to increase the diameter of one or more
lens element surfaces, particularly the image-side surface of L1
since it is closest the entrance aperture. This is due to the
relationship between f-number, focal length (EFL), and the
diameter of the entrance aperture (i.e. the entrance pupil diameter
EPD) which controls the amount of light that enters the
assembly: 𝑓𝑓𝑛𝑛𝑛𝑛𝑚𝑚𝑛𝑛𝑛𝑛𝑟𝑟 = 𝐸𝐸𝐸𝐸𝐸𝐸
𝑑𝑑𝑑𝑑𝑑𝑑𝑑𝑑𝑑𝑑𝑑𝑑𝑑𝑑𝑑𝑑
= 𝐸𝐸𝐸𝐸𝐸𝐸
𝐸𝐸𝐸𝐸𝐸𝐸
. Given the arrangement
of Example 5 where the aperture is located behind the first lens
L1, a POSITA would have recognized that increasing the
diameter of L1’s surfaces would thereby also increase the
aperture and allow more light to enter the system.
Pet. 49–50 (citing Ex. 1003 ¶¶ 77, 78; Ex. 1016, 59); see also id. (citing Ex.
1003 ¶¶ 60, 67–69 (Petitioner arguing that “a change in the entrance pupil or
aperture stop leads to a change in the diameter of the lens”)).
In Petitioner’s design, modified by the first, second, and third
modifications discussed below, the “EFL=5.569 mm, TTL=5.274 mm, and
thickness and spacing of L2-L5 remain unchanged” from Ogino’s original
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Example 5 and “[t]he focal lengths f1 and f2 as calculated by Zemax change
slightly due to software optimization [with] the L2 lens having a meniscus
shape and increasing the diameter of the aperture.” Id. at 50 (citing Ex. 1003
¶ 79, Appendix, Figs. 3A–3D). Petitioner contends that its modified design
with “Example 5 at F#=2.8 (and L2 meniscus) maintains the same structural
design (i.e., similar focal lengths and spacing) and similar performance
characteristics when compared to the original Example 5 design.” Id. at 51
(citing Ex. 1003, Appendix, Figs. 1B, 1C, 3B, 3C).
Petitioner further contends that “Example 5 with meniscus L2 and
F#=2.8 further modified with a larger D7 gap between the third (L3) and
fourth (L4) lens elements renders [8.0-11.0] obvious.” Pet. 55 (citing Ex.
1003, 83). Petitioner contends that “[e]nlarging D7 would have been
obvious for a POSITA to try because Ogino expressly teaches it.” Id. (citing
Ex. 1005, 12:51–63). According to Petitioner, Ogino teaches that
it is desirable that the spacing D7 on the optical axis between the
third lens L3 and the fourth lens L4 and the focal length f of the
whole system satisfy the following conditional expression (10).
0.05 < 𝐷𝐷𝐷𝐷7/𝑓𝑓 < 0.2.
Id. (quoting Ex. 12:51–63).
Petitioner further contends that
Ogino continues to explain that “conditional expression (10)
defines a desirable numerical range of a ratio of the spacing D7
on the optical axis between the third lens L3 and the fourth lens
L4 to the focal length f of the whole system.” This gap makes it
possible “to appropriately suppress distortion which tends to
occur when the total length is reduced” and “to satisfactorily
correct astigmatism.” This conditional expression instructs a
POSITA that D7 can be modified, based on the original Example
5 design, to a range between 0.298 mm and 1.191 mm. Example
5, though, shows D7 at 0.506 mm, the lower end of the range. A
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POSITA thus would have found it obvious to try to modify
Example 5 to see if any benefit exists with D7 at the other end of
the range.
Id. at 55–56 (citing Ex. 1005, 12:51–63, Table 9; Ex. 1003, 85). Based on
this understanding, Petitioner contends that “[w]hen conditional expression
(10) is applied to Example 5 modified for a meniscus L2 lens and F#=2.8, a
POSITA would have realized better performance by increasing D7.” Id. at
56 (citing Ex. 1003, Figs. 4A–4D). Petitioners explains that “[t]his [is]
apparent by comparing Example 5 modified for F#=2.8 and meniscus L2
(see Figs. 3A-3D) against this modification with D7 increased . . . .” Id.
(citing Ex. 1003, Appendix, Figs. 3A–3D, 4A–4D).
Based on the above-quoted modifications––a first modification to
Ogino’s Example 5 to change its second lens to a meniscus shape, a second
modification to Example 5 to lower its F# to 2.8, and a third modification to
Example 5 to increase the length D7 of the gap between third lens L3 and
fourth lens L4––Petitioner contends that “[i]n Example 5 as modified in
[8.0],” “L1 has f1=+2.578 mm, maintaining positive refractive power, L2 has
f2=-5.510 mm and positive radii of curvature on both surfaces, maintaining
negative refractive power and meniscus shape, and L3 has f3=-6.952 mm,
maintaining negative refractive power.” Id. at 59 (citing Ex. 1003,
Appendix, Figs. 4A–4D).
b) Analysis of Petitioner’s Motivation to Combine
We are persuaded that a POSITA would have sought to lower Ogino’s
Example 5 F#, 3.94, to 2.8, because a faster f-number, like 2.8 would have
been desirable in a cell phone with a short TTL. The TTL would have been
understood to dictate that thickness of a cell phone, and the cell phone
would, in turn, have been understood to be improved by a lower F#. Ex.
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1003 ¶¶ 75, 77; Ex. 1012, 3–4. This is because a POSITA would have
understood that a lower F# would mean brighter images and faster lenses,
which would have been understood to be needed and trending in cell phones.
Ex. 1013, 104. Dr. Sasián also testifies that Bareau teaches that “smaller
pixel sensors suffer at higher f-numbers due to limited light capturing
ability.” Ex. 1003 ¶ 71 (citing Ex. 1012, 3–4).
Bareau teaches “typical lens specifications for a ¼″ sensor form”
including an F# of 2.8. Ex. 1012, 3. Dr. Sasián explains that cell phone
cameras with ¼″ sensors with f-numbers of 2.8 or lower were common by
the earliest possible priority date of the ’647 patent and “it was at least
expected that cell phone camera lenses would satisfy similar specifications.”
Ex. 1003 ¶ 75 (citing Ex. 1024 (Wang), 1:39–41). Dr. Sasián’s testimony is
supported by Wang, which discloses “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.” Ex. 1024, 1:39–41.
Although Bareau’s typical lens specifications are for lenses with a
field of view of around 60 degrees (i.e., wide angle lenses), we are
persuaded that its teachings would similarly apply to telephoto lenses
because “the f-number indicates how much light reaches the image sensor
pixels regardless of a lens’s focal length or FOV.” Pet. 48–49 (citing Ex.
1003 ¶ 77; Ex. 1012, 3–4; Ex. 1005, Figs. 14, 15).
We are also persuaded that a POSITA would have understood that
Ogino’s Example 5 F# could be lowered by increasing the diameter of L1’s
surfaces which “would thereby also increase the aperture and allow more
light to enter the system.” Ex. 1003 ¶ 78. Dr. Sasián explains that this is
because of “the relationship between f- number, focal length (EFL), and the
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diameter of the entrance aperture (i.e. the entrance pupil diameter EPD)
which controls the amount of light that enters the assembly” as indicated by
the equation given by Walker.23 Id. (citing Ex. 1016, 59–60, 67–69).
We are further persuaded that a POSITA would have been motivated
to increase D7, the gap between Ogino’s third lens L3 and fourth lens L4.
To prove obviousness under an obvious to try theory, one must show (1) a
design or market need to solve a particular problem, and (2) that “there are a
finite number of identified, predictable solutions” that would lead to an
expectation of success. KSR, 550 U.S. at 421 (emphasis added). Here,
Ogino discloses that it would be desirable for D7 to satisfy conditional
expression 10, which specifies a range of desirable values for D7. Pet. 55
(citing Ex. 1005, 12:51–63). Petitioner also takes the position that a
POSITA would experiment with values for D7, i.e., that it would be obvious
to try different values for D7 within Ogino’s finite range, because the gap
makes it possible “to appropriately suppress distortion which tends to occur
when the total length is reduced” and “to satisfactorily correct astigmatism.”
Ex. 1005, 12:51–63. Petitioner presents Zemax plots and persuasively
shows that increasing the distance D7 between third lens L3 and fourth lens
L4 in Ogino’s Example 5, along with modifying its second lens L2 to have a
meniscus shape and lowering the F# to 2.8, would have resulted in improved
relative illumination in certain areas, as well as other benefits. See e.g., Ex.
1003, 84–89, Appendix, Figs. 3A, 3B, 4B.

23 Walker is Ex. 1016, a book entitled “Optical Engineering Fundamentals”
by Bruce H. Walker, copyright 1995.
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For the foregoing reasons, we determine that Petitioner’s motivation
to combine is supported by sufficient rational underpinning with a
reasonable expectation of success. See e.g., Ex. 1003 ¶¶ 74–80.
[8.6] “wherein the lens assembly has an effective
focal length (EFL),”
[8.7] “wherein a lens system that includes the lens
assembly plus a window positioned between the fifth
lens element and an image plane”
[8.8] “a total track length (TTL) of 6.0 millimeters
or less and”
Petitioner contends “Example 5 as modified in [8.0] renders [8.6]
obvious because it has an EFL= 5.569 mm.” Pet. 59 (citing Ex. 1003,
Appendix, Fig. 4A). “Example 5 as modified in [8.0] renders [8.7] obvious
because it maintains a cover glass element between the fifth element and the
image plane, as discussed in [1.8].” Id. at 60 (citing Ex. 1003, Appendix,
Fig. 4A). Petitioner further contends that “Example 5 as modified in [8.0]
renders [8.8] obvious because it has a TTL=5.274 mm, which is less than 6.0
mm,” which is “similar to TTL=5.273 as in Example 5 unmodified (see
[1.9]).” Id. (citing Ex. 1003, Appendix, Fig. 4A) (emphasis added).
[8.9] “wherein the lens assembly has a ratio
TTL/EFL<1.0,”
Petitioner contends that “Example 5 as modified in [8.0] renders [8.9]
obvious because it has a TTL=5.274 mm (see [8.8]) and has an EFL=5.569
(see [8.6]), yielding TTL/EFL=0.947, which is less than 1.0.” Pet. 60.
[8.10] “wherein a f-number F# of the optical lens
assembly is smaller than 2.9,”
Petitioner explains how this claim limitation is met and why it would
have been obvious to a POSITA to modify Ogino’s Example 5 with Bareau
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with its motivation to combine Ogino, Chen II, and Bareau as set forth
above. See Pet. 60 (citing Ex. 1003, 90, Appendix, Figs. 4A, 4D).
[8.11] “wherein f1 is smaller than TTL/2,”
[8.12] “wherein lens elements L3 and L4 are
separated by a gap greater than TTL/5,”
Petitioner contends that “Example 5 as modified in [8.0] renders
[8.11] obvious because it has f1=+2.578 mm (see [8.1]) and TTL=5.274 mm
(see 8.8)” thus meeting the claimed ratio:
2.578 𝑚𝑚𝑚𝑚 < 5.274
2
→ 2.578 𝑚𝑚𝑚𝑚 < 2.637 .
Pet. 60–61 (citing Ex. 1003, 90, Appendix, Figs. 4A, 4D). Petitioner also
contends that “Example 5 as modified in [8.0] renders [8.12] obvious
because it has TTL=5.274 (see [8.8]), yielding TTL/5=1.055 mm, which is
less than D7.” Id. at 61. According to Petitioner, “[a]s shown in APPL-
1003, Appendix, Fig. 4D, D7 (L3-L4 gap) is increased to 1.085
mm, which as discussed above in [8.0], would have been obvious to try
based on conditional expression (10) (0.0550%.’” PO Resp. 69 (citing Ex.
1012, 7; Ex. 2001 ¶ 143).
Petitioner responds that “the claims of the ’647 patent do not include
any requirements for relative illumination” and that “the relative
illumination figure of >50% listed in the ‘typical lens specifications’ of
Bareau is exactly that—a ‘typical’ lens characteristic and not a necessary
requirement.” Pet. Reply 26 (citing Ex. 1012, 7; Ex. 1037 ¶ 32). Petitioner
further responds that “[a] POSITA would have known that photographic
lenses are also designed with a relative illumination less than 50%” and that
“if a higher relative illumination was an indispensable design requirement, a
POSITA could have considered making further modifications to Ogino’s
Example 5 lens assembly to achieve this.” Id. (citing Ex. 1037 ¶ 53; Ex.
1003 ¶ 62; Ex. 1005, 19:28–22:60 (Ogino’s tables showing optical
parameter data for each of its examples)).
Petitioner has the better position. We determine that even if the
combined lens assembly of Ogino, Chen II, Bareau, and Kingslake does not
meet Bareau’s greater than 50% specification for relative illumination, this
would not be fatal to the combination. We agree with Petitioner that Bareau
does not require a specific relative illumination figure, and instead
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characterizes the figure as a “typical lens specification.” See Pet. Reply 26.
A POSITA would have weighed the benefit of, for example, reducing an f-
number of a lens assembly (i.e., brighter and faster images and compatibility
with “small sensor formats”) against a 5% tradeoff in relative illumination
at, for example, “29.5°, the farthest edge of the field.” See Pet. 65–66 (Ex.
1003 ¶ 86; Ex. 1013, 104); PO Resp. 69; Winner Int’l Royalty, 202 F.3d at
1349, n.8. There is insufficient evidence of record to support the finding
that a 5% tradeoff in relative illumination at “the farthest edge of the field”
would have been understood by a POSITA to outweigh the benefits offered
by a lower f-number.
For the foregoing reasons, Patent Owner’s arguments do not
undermine Petitioner’s challenge to claim 6 based on Ogino, Chen II,
Bareau, and Kingslake.
H. Obviousness over Hsieh and Beich
Petitioner contends that claim 7 is unpatentable as obvious under 35
U.S.C. § 103 over Hsieh and Beich. Pet. 71–89. For the reasons that follow,
we determine that Petitioner establishes unpatentability of dependent claim 7
over Hsieh and Beich by a preponderance of the evidence.
1. Overview of Hsieh
Hsieh concerns an “Optical Photographing Lens Assembly, Image
Capturing Device and Electronic Device.” Ex. 1025, code (54). Hsieh
discloses an
optical photographing lens assembly includes in order from an
object side to an image side, an aperture stop 100, a first lens
element 110, a second lens element 120, a third lens element 130,
a fourth lens element 140, a fifth lens element 150, an IR-cut
filter 160 and an image surface 170, wherein the image sensor
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180 is disposed on the image surface 170 of the optical
photographing lens assembly.
Id. at 9:16–25. Hsieh’s first embodiment lens assembly is depicted in Figure
1, which is reproduced below.

Figure 1 of Hsieh depicting lenses in Hsieh’s first
embodiment lens assembly.
Hsieh discloses that first lens element 110 and fifth lens element 150 have a
positive refractive power and second, third, and fourth lens elements 120,
130, and 140 have negative refractive power. Id. at 9: 31, 37, 44, 50, 59.
The optical parameters for Hsieh’s first embodiment lens assembly
are presented in Table, reproduced below.
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Table 1 of Hsieh sets forth optical parameters for
Hsieh’s first embodiment lens assembly.
Hsieh further discloses that its first lens element 110 has an object-
side surface 111 that is convex and an image-side surface 112 that is
concave. Id. at 9:32–33. Its second lens element 120 also has a convex
object-side surface 121 and concave image-side surface 122. Id. at 9:37–39.
Hsieh’s third lens element 130 has a concave object-side surface 131 and a
convex image-side surface 132. Id. at 9:44–46. Fourth lens element 140 has
a concave image-side surface 141 as well as a concave object-side surface
142. Id. at 9:50–53. Hsieh’s fifth lens element 150 has a convex image-side
surface 151, as well as a convex object-side surface 152. Id. at 9:59–61.
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2. Overview of Beich
Beich concerns “the process of creating state-of-the-art polymer optics
and a review of the cost tradeoffs between design tolerances, production
volumes, and mold cavitation.” Ex. 1020, 2. Beich discloses design
considerations, or “rules of thumb,” with respect to shape and tolerances of
polymer-based optical devices that drive cost and manufacturability.” Id. at
7. These considerations include such knowledge as “thicker parts take
longer to mold than thinner parts” and “[o]ptics with extremely thick centers
and thin edges are very challenging to mold.” Id.
3. Dependent Claim 7
Claim 7 recites “[t]he lens assembly of claim 2,
wherein the lens assembly further includes a ratio
between a largest optical axis thickness L11 and a
circumferential edge thickness L1e of lens element
L1 of L11/L1e<3.”
Petitioner shows how Hsieh and Beich teach the limitations of
independent claim 1 and dependent claim 2 from which claim 7 depends.
Petitioner contends that preamble [1.0] is met because Hsieh “teaches an
‘optical photographing lens assembly [that] has a total of five lens elements’
arranged ‘in order from an object side to an image side’” as shown in its
annotated version of Hsieh’s Figure 1. 27 Pet. 82 (citing (Ex. 1025, 2:22–26)
(emphasis omitted).
According to Petitioner, Hsieh discloses claim limitations [1.1]
through [1.5] because
Example 1 includes a “first lens element 110 with positive
refractive power,” [“]a second lens element 120 with negative

27 We need not determine if preamble [1.0] is limiting because Petitioner has
shown that the subject matter of the preamble [1.0] is taught by Hsieh.
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refractive power [that] has an object-side surface 121 being
convex . . . and an image-side surface 122 being concave,” and a
“third lens element 130 with negative refractive power,” a
“fourth lens element 140” and a “fifth lens element 150 . . . .” A
POSITA would have understood the L2 lens to be a meniscus
shape because it is convex on the object-side and concave on the
image-side.
In Example 1, L1 has a focal length (f1) of 2.86 mm, L2
has a focal length (f2) of -5.62 mm, and L3 has a focal length (f3)
of -41.86 mm as shown below in Table 1 . . . .
Pet. 83–84 (citing 1025, 9:31–67, Table 1; Ex. 1003, 111; Ex. 1010, 163
(Fig. 4.15)) (emphasis omitted).
Petitioner further contends that Hsieh meets the expression set forth in
limitation [1.6], 1.2×|f3|>|f2|>1.5×f1, by substituting f1=2.86 mm, f2=-5.62
mm, and f3=-41.86 mm into the expression to obtain:
1.2 × |-41.86𝑚𝑚𝑚𝑚| > |-5.62𝑚𝑚𝑚𝑚| > 1.5 × 2.86𝑚𝑚𝑚𝑚, which evaluates to
50.232 mm > 5.62 > 4.29. Id. at 84.
Petitioner further contends that Hsieh meets limitation [1.7] because
Hsieh’s Table 1, which has optical data for the optical lens set of Example 1,
sets forth “a focal length ‘f’ (EFL) of 5.88 mm.” Id. at 85. According to
Petitioner, Hsieh meets limitation [1.8] because “Example 1 includes an ‘IR-
cut filter 160 [] made of glass material and located between the fifth lens
element 150 and the image surface 170,” as shown in Figure 1. Id. (citing
Ex. 1025, 10:1–4) (emphasis omitted) (alteration in original).
As to limitation [1.9], Petitioner contends that “a POSITA would have
identified the TTL of Example 1 to be the distance between the object-side
surface of the first lens L1 (100) and the image plane 170.” Id. at 86 (citing
Ex. 1025, 116–117). Petitioner contends that “[t]he total track length (TTL)
of Example 1 with the glass IR filter can thus be calculated by summing the
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widths of D2 to D13 (Thicknesses) from Table 1 . . . .” and that “[t]he sum
of the distances D2 to D13 is 5.598 mm,” which Petitioner further contends
is confirm by Zemax and is “6.5 millimeters or less” as claimed. Id. at 87–
88 (citing Ex. 1003, 117, Appendix; Ex. 1025, Table 1).
With respect to limitation [1.10], Petitioner substitutes its above-
calculated value for TTL, 5.598 mm, and the EFL set forth in Hsieh’s Table
1, 5.88 mm, into the claimed expression TTL/EFL<1.0 (i.e., 5.598/5.88),
which evaluates to 0.952 mm, and which is < 1.0 as claimed. Id. at 88
(citing Ex. 1003, 117).
With respect to the limitation recited in claim 2, Petitioner points to
the value in Hsieh’s Table 1, “Fno=2.83,” which it contends is less than 2.9
as claimed. Id. at 89.
With respect to the limitation recited in claim 7, Petitioner contends
that
Hsieh and Beich renders [7.0] obvious. As discussed above in the
“Reasons to combine either Hsieh or Chen with Beich,” a
POSITA would have found it obvious to limit the diameter of
Hsieh’s Example 1 L1 lens so that the center-to-edge thickness
is maintained at less than 3:1 according to Beich’s teaching. The
Zemax model of Example 1, shows that the L1 lens has a center
thickness of 0.805 mm and an edge thickness of 0.397 mm
yielding a center-to-edge thickness ratio of 2.03. Because the
center-to-edge-thickness is met as Hsieh’s Example 1 is designed
and a POSITA would have found it obvious to set the diameter
to maintain this ratio, the Hsieh combined with Beich renders
[7.0] obvious.
Id. (citing Ex. 1003, 118–20, Appendix, Fig. 6E; Pet. § XI.G.6).
Petitioner contends that a POSITA would have combined Hsieh and
Beich because Hsieh does not “specify diameters for its respective lens
elements, thus leaving it as a design choice based on manufacturability.”
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Pet. 80 (citing Ex. 1003 ¶¶ 99, 113). Petitioner further contends that
“Hsieh’s L1 lens, as originally designed, ha[s] an edge thickness of 0.397
mm as calculated by Zemax, thus yielding a center-to-edge thickness ratio of
about 2.03 mm.” Id. (citing Ex. 1003 ¶ 99, Appendix, Fig. 6E). In order for
Hsieh’s lens element L1 to pass “through all intended light rays while being
easier to manufacture,” “a POSITA would have looked to polymer injection
molding references such as Beich, which ‘discuss[es] the polymer optics
manufacturing process and examine[s] the best practices to use when
working with a polymer optics manufacturer.’” Id. at 79 (citing Ex. 1003 ¶¶
98, 112; Ex. 1007, 2); see also id. (Petitioner arguing that Hsieh discloses
that it is preferably made of injection-molded plastic). According to
Petitioner, a POSITA looking to manufacture Hsieh’s Example 1 lens design
“would have understood the benefit of applying the teachings of Beich,
thereby resulting in an either design having an L1 lens with a diameter set
for manufacturing so that the center-to-edge thickness ratio is maintained at
less than 3.” Id. (citing Ex. 1003 ¶¶ 91, 114).
Petitioner takes the position that, because “[o]ptics with extremely
thick centers and thin edges are very challenging to mold,” and because
Hsieh does not “provide diameters for their respective L1 lenses” but
supports a “center-to-edge-thickness ratios be[ing] less than 3:1 within a
diameter range suitable for manufacturing,” we should “consistently find
here that a POSITA would have combined the teaching of Beich with either
Hsieh or Chen for the same purpose as the Board found previously in
IPR2019-00030.” Id. at 81. According to Petitioner, in the IPR2019-00030
proceeding, we determined that “it would have been obvious for a POSITA
to combine the teaching of Beich with Ogino’s Example 6 design to
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similarly set the diameter of the L1 lens to maintain a center-to-edge
thickness ratio of less than 3:1.” Id. (citing IPR2019-00030, Paper 32 (Final
Written Decision), 35–37).
Ogino does not provide the diameter of first lens L1. Given the need
to set this diameter, Beich provides explicit disclosure as to why the
ordinarily skilled artisan would select a diameter for Ogino’s first lens
element based on Beich’s rules of thumb––because the ratio disclosed in
Beich’s Table 2 constitutes the limits of fabrication in an ideal lens system.
Ex. 1020, 7. We emphasize that a POSITA would have selected a diameter
for lens L1 based on the limits of fabrication, i.e., manufacturability or
manufacturing considerations, because claim 7 recites and requires a
particular range of ratios of largest optical axis thickness to circumferential
edge thickness for the claimed first lens.
For the foregoing reasons, we are persuaded that Petitioner’s reasons
to combine Hsieh and Beich are supported by sufficient rational
underpinning with a reasonable expectation of success. See e.g., Ex. 1003
¶¶ 96–99. We have reviewed the cited portions of Hsieh, Beich, Dr.
Sasián’s testimony, and the accompanying Zemax diagrams and we are
persuaded that Petitioner establishes that the combination of Hsieh and
Beich teaches the limitation recited in claim 7. See e.g., id. at 101.
Accordingly, we are persuaded that Petitioner establishes unpatentability of
claim 7 over the combination of Hsieh and Beich by a preponderance of the
evidence.
4. Patent Owner’s Arguments
Patent Owner argues that,“[n]owhere does Petitioner or Dr. Sasián
discuss how a POSITA would address the manufacturing, tolerances, or
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ensuring system desensitization of the optical design in the modification of
Hsieh in view of Beich.” PO Resp. 70.
Patent Owner also argues that
when designing a lens assembly, a POSITA would have allowed
the inputs of radius of the lenses, spacing between lens surfaces
and the conic coefficients to vary. This would permit better
performance to be obtained during the design process. However,
as shown in the Prescription Data for in the modification of Hsieh
in view of Beich in Fig. 6D, none of these values were allowed
to vary, as can be seen by the there being no “V” next to the
entries.
Id. at 71 (citing Ex. 2001 ¶ 149). In this regard, Patent Owner contends that
“[p]rohibiting all of these inputs from varying while designing a lens would
have greatly reduced the ability to improve the performance and would have
almost certainly prevented a POSITA from finding the best performance
result.” Id. at 72 (citing Ex. 2001 ¶ 150).
As to Patent Owner’s argument concerning the manufacturability of
lenses, it is lacking in detail with regard to the specific combination of Hsieh
and Beich, and is unavailing in part because Petitioner specifically addresses
manufacturability in considering the limits of fabrication in Beich with
respect to center-to-edge thickness ratio, as set forth above. Petitioner notes,
and we agree, “claim 7 does not recite any manufacturing requirements
besides the center-to-edge thickness ratio.” Pet. Reply 27 (citing Pet. 81–89;
Ex. 1003 ¶¶ 96–100). So it is not clear what other manufacturability
arguments Patent Owner thinks Petitioner lacks, or why they would be
needed.
As to Patent Owner’s argument concerning vary parameters to
improve performance, Petitioner explains that “no changes have been made
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to Hsieh’s lens assembly to meet the limitations of claim 7, and Beich’s ‘rule
of thumb’ is merely used to show how a POSITA would have chosen the
diameter of lens L1 (which is not listed in Hsieh’s lens prescription).” Pet.
Reply 27 (citing Pet. 80). Petitioner characterizes Patent Owner’s argument
as taking the position that “it was unacceptable to not change any parameters
of Hsieh’s Fig. 1 lens.” Id. (citing PO Resp. 72).
We are persuaded that Petitioner does not make any changes to
Hsieh’s lens assembly because it is not necessary in Petitioner’s combination
of Hsieh and Beich and Hsieh’s lens assembly is Petitioner’s starting point.
See Pet. Reply 27. Patent Owner’s argument lacks detail and explanation as
to why allowing “the inputs of radius of the lenses, spacing between lens
surfaces[,] and the conic coefficients” to vary provides a greater “ability to
improve the performance” of Hsieh’s lens design or the combined Hsieh and
Beich lens design. See Pet. Reply 28; PO Resp. 72. Even if Patent Owner’s
argument was more detailed, it is not necessary for Petitioner’s combination
to be the best or most optimal design, contrary to Patent Owner’s argument
(see PO Resp. 72). See PAR Pharm., 773 F.3d at 1197–98 (“Our precedent
. . . does not require that the motivation be the best option, only that it be a
suitable option from which the prior art did not teach away.”); Fulton, 391
F.3d at 1200 (holding that “a particular combination” need not “be the
preferred, or the most desirable, combination described in the prior art in
order to provide motivation”).
For the foregoing reasons, Patent Owner’s arguments do not
undermine Petitioner’s challenge to claim 7 over Hsieh and Beich.
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I. Obviousness over Chen, Iwasaki, and Beich
Petitioner contends that claim 12 is unpatentable as obvious under 35
U.S.C. § 103 over Chen, Iwasaki, and Beich. Pet. 71–81, 90–96. For the
reasons that follow, we determine that Petitioner establishes unpatentability
of dependent claim 12 over Chen, Iwasaki, and Beich by a preponderance of
the evidence.
1. Overview of Chen
Chen concerns an “Optical Lens Set.” Ex. 1020, code (54). In its first
exemplary optical lens set, Chen discloses five lens elements 10 to 50, filter
70, aperture stop 80, image plane 71. Id. at 8:55–58. First lens element 10,
third lens element 30, and fifth lens element 50 have positive refractive
powers, and second lens element 20 and fourth lens element 40 have
negative refractive powers. Id. at 8:63, 9:6–7, 9:16, 9:25, 9:34. Figure 6,
reproduced below, depicts these lens elements in Chen’s first exemplary
optical lens set.
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Figure 6 depicts Chen’s first exemplary optical
imaging lens set.
In the vicinity of the optical axis, Figure 6 also depicts first lens
element 10 with first object-side surface 11 that is convex and first image-
side surface 12 that is concave. Id. at 8:64–65, 9:1. In a similar vicinity,
second lens element 20 is shown with second object-side surface 21 being
convex and second image-side surface 22 being concave. Id. at 9:6–11.
Third lens element 30 is shown with third object-side surface 31 being
concave and third image-side surface 32 being convex. Id. at 9:16–22.
Fourth lens element 40 is shown with fourth object-side surface 41 being
concave and fourth image-side surface 42 being concave. Id. at 9:25–31.
Fifth lens element 50 is shown with fifth object-side surface 51 being
concave and fifth image-side surface 52 being convex, in the vicinity of the
optical axis. Id. at 9:34–39.
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Optical data for Chen’s first exemplary optical lens set 1 is shown in
Figure 24, reproduced below. Id. at 10:1–2.

Figure 24 of Chen sets forth optical data for the
optical lens set in the first example.
2. Dependent Claim 12
Claim 12 recites “[t]he lens assembly of claim 8,
wherein the lens assembly further includes a ratio
between a largest optical axis thickness L11 and a
circumferential edge thickness L1e of lens element
of L11/L1e<3.”
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Dependent claim 12 depends from independent claim 8 and thus,
Petitioner must show how its proposed combination teaches or suggests all
of the limitations of independent claim 8, in addition to showing how the
combination satisfies the limitation recited in claim 12.
Petitioner contends that “Chen discloses [8.1-8.5] because Example 1
has a L1-L5 lens elements, each with respective focal lengths f1-f5, as
provided in Fig. 24 . . . .” Pet. 91. Petitioner explains that, from the optical
data Figure 24, the following is extracted:
L1 has positive refractive power because f1=+2.975 mm and L2
has negative refractive power because f2=-4.568 mm. L2 has a
meniscus shape that is convex toward the object-side because the
radii of curvature for surfaces “21” and “22” are both positive,
meaning that the object-side is convex and the image-side is
concave. Thus, Chen teaches [8.1-8.5].
Pet. 92 (citing Ex. 1003, 129–31; see Ex. 1010, 159, footnote (stating that
refractive power is the inverse of the focal length); Ex. 1010, Fig. 4.15
(showing lenses of meniscus shape)).
According to Petitioner, “Chen discloses [8.6] because Example 1 has
a focal length EFL=6.582 mm.” Id. With respect to [8.7], “Chen teaches
that the Example 1 lens system includes a glass IR [infrared] filter ‘placed
between the image-side surface 52 of the fifth lens element 50 and the image
plane 71.’” Id. at (citing Ex. 1020, 7:42– 46, Fig. 24). The glass IR filter
has a thickness of 0.210 mm, a refractive index of 1.517, and an Abbe No. of
64.167––values also obtained from Fig. 24. Petitioner contends that Iwasaki
also “shows an IR filter of similar refractive index and Abbe No. but at
0.145 mm [of thickness].” Id. (citing Ex. 1009, Tables 1 and 3). Petitioner
further contends that it “would have been obvious for a POSITA to replace
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Chen’s IR filter with Iwasaki’s thinner filter to shorten the length but still
protect the sensor and filter infrared light.” Id. at 93 (citing Ex. 1003, 135).
With respect to limitation [8.8], Petitioner explains that
Iwasaki first two embodiments use IR filters 0.145 mm thick
rather than 0.210 mm in embodiment four or 0.300 mm filter in
embodiment three. Thus, POSITAs were aware IR filter
thickness could vary which would have benefited Chen’s desire
to for “improved imaging quality with reduced lens set size,” and
Iwasaki demand for telephoto lenses with shortened lengths. A
POSITA thus would have been motivated to use a 0.145 mm IR
Filter in Chen’s Example 1 to reduce the length.
Pet. 93–94 (citing Ex. 1003, 136; Ex. 1009, 1:54–65). Petitioner also
contends that Chen’s “Example 1 has TTL=6.019 mm,” which “[a] POSITA
would have considered [] to be ‘equal’ to 6.0 mm” and that “[u]sing a 0.145
mm IR filter as taught in Iwasaki shortens the TTL to 5.985 mm as
calculated by Zemax.” Id. at 94 (citing Ex. 1003, Appendix, Fig. 7A; Ex.
1009, Fig. 42). We are persuaded that Chen as modified with Iwasaki,
having a TTL of 5.985 mm, sufficiently satisfies limitation [8.8].
With respect to limitation [8.9], Petitioner contends that Chen’s
“Example 1 has an EFL=6.582 mm (see [8.6]) and, when modified with a
0.145 mm IR filter, has a TTL=5.985 mm (see [8.8]), thereby satisfying the
claimed ratio.” Id. (citing Ex. 1003, Appendix, 7A). With respect to
limitation [8.10], Petitioner contends that “Chen discloses this limitation
because Example 1 has F#=2.661.” Id. (citing Ex. 1020, 13:17–18, Fig. 42
(col. 1, row ‘FNO’) (emphasis omitted). With respect to limitation [8.11],
Petitioner contends that “Chen discloses this limitation because Example 1
has an f1=+2.975 mm (see [8.1]) and, when modified with a 0.145 mm IR
filter, has a TTL=+5.985 mm (see [8.8]), satisfying the claimed ratio.” Id.
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(citing Ex. 1003, 130, 138). With respect to limitation [8.12], Petitioner
contends that “the combination of Chen and Iwasaki renders this limitation
obvious” because “Chen’s Example 1 has a gap between L3 and L4 of 1.598
mm” and “Example 1 when modified with a 0.145 mm IR filter has a
TTL=5.985 mm (see [8.8]), thereby satisfying the claimed ratio.” Id. at 95
(citing Ex. 1020, Fig. 24 (annotated)).
As motivation to combine, Petitioner contends that
A POSITA would have found it obvious and desirable to modify
Chen’s Example 1 lens system with Iwasaki’s teaching of using
a 0.145 mm cover glass element in a telephoto lens system. Such
a combination would have both maintained the presence of a
cover glass element in Example 1—for protecting the sensor and
filtering infrared light, which Chen already teaches—while
beneficially further reducing the total length of the lens system
as indicated by Iwasaki. A POSITA would have been well aware
that this modification simply required substituting the 0.210 mm
cover glass element already present in Chen’s Example 1 with a
0.145 mm element as taught in Iwasaki and shifting the location
of the image plane to correct for the thinner cover glass element
(i.e., focus shift).
Pet. 75 (citing Ex. 1003 ¶¶ 107–108; Ex. 1009, 1:57–60 (“[D]emand for
shortening of the total lengths of lenses is increasing for imaging lenses
which are employed in devices such as smart phones and tablet terminals,
which are becoming progressively thinner.”).
We are persuaded that Petitioner’s motivation to combine Chen and
Iwasaki is reasonable and well-supported and as such, we determine
Petitioner’s motivation to combine Chen and Iwasaki has a rational
underpinning and with a reasonable expectation of success. See e.g., Ex.
1003 ¶¶ 107–113.
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Petitioner explicitly addresses limitations [8.1] through [8.12] and
preamble [8.0], but fails to explicitly set forth limitations [8.13] and [8.14]
specifically with respect to the ground applying Chen, Iwasaki, and Beich.
Patent Owner argues that “neither Petitioner nor its expert Dr. Sasián
provide any analysis or evidence as to whether elements 8.13 or 8.14 are
found in the combination of Chen, Iwasaki and Beich references.” PO Resp.
74 (citing Ex. 2001 ¶ 156).
With respect to limitation [8.13], citing its analysis of claim 8 over
Ogino and Chen II on pages 61–62 of the Petition, Petitioner responds that
“[l]imitation 8.13 recites ‘L4 and L5 are separated by a gap smaller than
TTL/20’ and 8.14 recites ‘the five lens element are made of plastic’” and
that Chen teaches both. Pet. Reply 28 (citing Pet. 61–62; Ex. 1001, 10:4–8).
Petitioner contends “[t]he TTL of Chen’s Example 1 with a thinner
cover glass is 5.985 mm.” Pet. Reply 30 (citing Pet. 95–96; Ex. 1003, 136,
Appendix, Fig. 7A). Petitioner further contends that “[t]he gap between L4
and L5 is 0.064 mm.” Id. (citing Pet. 91). Petitioner explains that “the gap
disclosed by Chen meets the recited limitation of ‘L4 and L5 are separated
by a gap smaller TTL/20.’” Id. (citing Pet. 30, n.2) (setting forth “0.064 mm
< 5.985 mm / 20 (or 0.29925 mm)”).
In its Sur-Reply, Patent Owner further contends that
[Petitioner] is applying, for the first time in this proceeding, some
prior art combination to the limitations 8.13 and 8.14 of claim 8
in the context of claim 12 under Ground 6. This is all new
argument. There was no previous application in the Petition of
any combination, be it Chen, [Iwasaki], and Beich or Example 5
of Ogino, Chen II and Bareau, to limitations 8.13 and 8.14 of
claim 8 in the context of claim 12.
PO Sur-Reply 18 (citing Pet. Reply 28–30).
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Although Petitioner points out “the Gap between L3 and L4” with
respect to limitation [8.12], Petitioner does not point out the Gap between L4
and L5. Compare Pet. 95, with id. at 91. Petitioner’s reference to pages 61
and 62 of the Petition in which Ogino and Chen II discuss limitations [8.13]
and [8.14] is of questionable relevance because it involves an entirely
different set of references.
In its discussion of limitation [8.9], Petitioner contends Chen’s
“Example 1 has a TTL=6.019 mm” and that “[a] POSITA would have
considered this to be ‘equal’ to 6.0 mm.” Id. at 94 (citing Ex. 1003, Fig. 42).
Petitioner contends that “[u]sing a 0.145 mm IR filter as taught in Iwasaki
shortens the TTL to 5.985 mm as calculated by Zemax. . . .” Id. (citing Ex.
1003, Appendix, Fig. 7A). Petitioner appears to rely on the smaller 5.985
mm TTL for satisfying limitation [8.12]. Id. at 95. Petitioner explains that
“the gap disclosed by Chen meets the recited limitation of ‘L4 and L5 are
separated by a gap smaller TTL/20.’” Id. (citing Pet. Reply 30, n.2) (setting
forth “0.064 mm < 5.985 mm / 20 (or 0.29925 mm)).
Our rules require that a petition specify with particularity where each
element of a claim is found in the prior art, and include a detailed
explanation of the relevance of the prior art to the claim. 37 C.F.R. §
42.104(b)(4) (“[t]he petition must specify where each element of the claim is
found in the prior art patents or printed publications relied upon”); id. §
42.22(a)(2) (“[e]ach petition . . . must include . . . a detailed explanation of
the significance of the evidence including material facts”); id. § 42.104(b)(5)
(the petition must “identify . . . the relevance of the evidence to the challenge
raised, including identifying specific portions of the evidence that support
the challenge”). As the Federal Circuit has explained, “[i]n an IPR, the
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petitioner has the burden from the onset to show with particularity why the
patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815
F.3d 1356, 1363 (Fed. Cir. 2016).
In that regard, a petition for inter partes review must identify how the
challenged claims are unpatentable, and must specify where each element of
the claim is found in the relied-upon prior art. 37 C.F.R. § 42.104(b); see
also 35 U.S.C. § 312(a)(3) (a petition must identify “with particularity, each
claim challenged, the grounds on which the challenge to each claim is based,
and the evidence that supports the grounds for challenge to each claim”). A
petition must also include “a detailed explanation of the significance of the
evidence including material facts, and the governing laws, rules, and
precedent.” 37 C.F.R. § 42.22(a)(2).
In the present proceeding, the Petition does not address limitation
[8.13] in the challenge applying Chen, Iwasaki, and Beich, does not
explicitly identify the gap value between L4 and L5, and does not explicitly
give a value for TTL/20. Although Petitioner explains, in its Reply, that it
intends to rely on the 5.985 mm TTL, the Petition sets forth two values for
TTL, 5.985 mm and 6.019 mm, the latter of which Petitioner contends a
POSITA would have understood to be equal to 6.0 mm. See Pet. 94. As set
forth above, we are persuaded that the 5.985 TTL satisfies the limitations of
independent claim 8. The Petition’s annotation of “the Gap between L3 and
L4” with respect to limitation [8.12] make clear how the gap between L4
and L5 could be inferred from Chen’s Figure 24. Given that the TTL (from
the modified design) was earlier identified, and the table shows the value for
the gap between L4 and L5, it would be difficult for us to say we could not
ascertain the nature of Petitioner’s challenge to limitation [8.13]––a value
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for TTL/20 and a comparison between this value and the gap between L4
and L5––even if claim limitation [8.13] was not quoted in the section
discussing the challenge based on Iwasaki, Chen, and Beich.
With regard to limitation [8.14], Petitioner contends that
Chen meets 8.14 as indicated by the refractive index and abbe
number values provided in Fig. 24, as Dr. Sasián states that “a
POSITA would have recognized that the refractive index and
Abbe number of the lens elements in Example 1 are within the
range of values of plastic materials used in injection molding
manufacturing. Patent Owner does not dispute this.
Pet. Reply 30–31 (citing Pet. 79, 91 (citing Ex. 1003 ¶¶ 97, 111; Ex. 1018,
27)). On page 79 of the Petition, Petitioner contends that “‘the preferred
polymer manufacturing technology for optical elements having a diameter
smaller than 0.1 m and a thickness not greater than 3 cm.’” Pet. 79 (citing
Ex. 1019, 34.14). The Petition further states that “[i]n addition to size
considerations, a POSITA would have recognized that the refractive index
and Abbe number of the lens elements in Example 1 are within the range of
values of plastic materials used in injection molding manufacturing.” Id.
(citing Ex. 1003 ¶¶ 97, 111; Ex. 1018, 27). Petitioner’s citation to page 91 of
the Petition merely references Chen’s Figure 24 that gives refractive indices
and Abbe numbers to the lenses in its lens assembly.
While paragraph 97 of Dr. Sasián’s First Declaration relates to the
challenge applying Hsieh and Beich, in paragraph 111, Dr. Sasián testifies
that
While Chen does not discuss manufacturing or materials of its
lens elements, a POSITA would have recognized that only a few
methods and materials would have been used to craft such small
aspheric components. One such method is to manufacture plastic
lenses through injection molding, which is “the preferred
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polymer manufacturing technology for optical elements having a
diameter smaller than 0.1 m and a thickness not greater than 3
cm.” APPL-1019, p.34.14. In addition to size considerations, a
POSITA would have recognized that the refractive index and
Abbe number of the lens elements in Example 1 are within the
range of values of plastic materials used in injection molding
manufacturing.
Ex. 1003 ¶ 111 (citing Ex. 1018, 27; Ex. 1019, 34.14).
We are persuaded that refractive indices and Abbe numbers in Chen’s
Figure 24 shown on page 91 of the Petition are in the range of values for
plastic lenses based on the scatter plot shown in the Field Guide (Ex. 1018),
that the Petition set forth this position on page 79, and that Dr. Sasián
explained it further in paragraph 111 of his First Declaration. We are further
persuaded that Chen in the combination of Iwasaki, Chen, and Beich teaches
that “the five lens elements are all made of plastic,” as recited in limitation
[8.14]––even if claim limitation [8.14] was not quoted in the section
discussing the challenge based on Iwasaki, Chen, and Beich.
With respect to limitation [12.0], Petitioner contends,
Chen and Beich renders this limitation obvious. As discussed
above in the “Reasons to combine either Hsieh or Chen with
Beich,” a POSITA would have found it obvious to limit the
diameter of Chen’s Example 1 L1 lens so that the center-to-edge
thickness is maintained at less than 3:1 according to Beich’s
teaching. The Zemax model of Example 1, shows that the L1 lens
has a center thickness of 0.855 mm (see APPL-1020 Fig. 6) and
an edge thickness of 0.293 mm yielding a center-to-edge
thickness ratio of 2.92. Because the center-to-edge-thickness is
met as Chen’s Example 1 is designed and a POSITA would have
found it obvious to set the diameter to maintain this ratio, the
combination of Chen and Beich renders this limitation obvious.
Pet. 96 (citing Ex. 1003, 139-42, Appendix, Fig. 7E; Pet. § XI.F.6).
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As motivation to combine Chen and Beich, Petitioner contends,
“[s]ince L1 in Example 1 of . . . Chen would preferably have been
manufactured via injection molding, and to the extent that” Chen does not
“provide manufacturing parameters,”
a POSITA would have looked to polymer injection molding
references such as Beich, which “discuss[es] the polymer optics
manufacturing process and examine[s] the best practices to use
when working with a polymer optics manufacturer.” According
to Beich, lens manufactures rely on “rules of thumb,” as
discussed above, in manufacturing lens elements to maintain the
ratio of center thickness to edge thickness to a value less than
three (“< 3:1”). This is because “[o]ptics with extremely thick
centers and thin edges are very challenging to mold.” The
“center thickness” and “edge thickness” in Beich correspond to
the “largest optical axis thickness L11” and the “circumferential
edge thickness L1e” in the ’647 Patent.
A POSITA would have recognized that . . . Chen [does
not] specify diameters for its respective lens elements, thus
leaving it as a design choice based on manufacturability.
Consequently, the L1 lens . . . with a thick center and edges that
grow thinner as the lens diameter increases [] is of the type for
which a POSITA would manufacture so that the ratio of center
thickness to edge thickness is less than 3:1. In other words, to
maintain the desirable 3:1 ratio, a POSITA would have known to
make set the diameter of [] [Chen’s] L1 lens element[] so that, at
a minimum, the lens would function for its intended purpose of
passing through all intended light rays while being easier to
manufacture.
Pet. 78–80 (citing Ex. 1003 ¶¶ 96, 98, 99, 110, 112, 113; Ex. 1007, 2, 7).
We are persuaded that Petitioner’s motivation to combine Chen and
Beich is reasonable and well-supported and as such, we determine
Petitioner’s motivation to combine Chen and Beich has a rational
underpinning and with a reasonable expectation of success.
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We have reviewed the cited portions of Iwasaki, Chen, and Beich, Dr.
Sasián’s testimony, Zemacs drawings, and accompanying prescription data,
and we are persuaded that Petitioner establishes that each of the limitations
of claim 8 and the limitation of claim 12 is taught by the combination of
Iwasaki, Chen, and Beich for the reasons discussed above. As discussed
above, we determine that Petitioner’s motivation to combine Chen and
Iwasaki and its motivation to combine Chen and Beich is supported by
sufficient rational underpinning with a reasonable expectation of success.
For the foregoing reasons, we conclude that Petitioner establishes
unpatentability of claim 12 by a preponderance of the evidence.
IV. CONCLUSION
We conclude that Petitioner establishes unpatentability by a
preponderance of the evidence with respect to its challenge to (1) claims 1,
2, 3, and 5 over Iwasaki, (2) its challenge to claims 1 and 4 over Ogino and
Chen II, (3) its challenge to claims 2, 3, 5, and 8–11 over Ogino, Chen II,
and Bareau, (4) its challenge to claim 6 over Ogino, Chen II, Bareau, and
Kingslake, (5) its challenge to claim 7 over Hsieh and Beich, and (6) its
challenge to claim 12 over Chen, Iwasaki, and Beich.28

28 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).
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Our conclusions regarding the challenged claims are summarized
below:

V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–12 of the ’647 patent are determined to be
unpatentable; and
FURTHER ORDERED that, because this a Final Written Decision,
parties to this proceeding seeking judicial review of this Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

Claims
Challenged
35
U.S.C. §
References/
Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1, 2, 3, 5 103(a) Iwasaki 1, 2, 3, 5
1, 4 103(a) Ogino, Chen II 1, 4
2, 3, 5,
8–11 103(a)
Ogino, Chen II,
Bareau 2, 3, 5, 8–11
6 103(a)
Ogino, Chen II,
Bareau,
Kingslake
6
7 103(a) Hsieh, Beich 7
12 103(a) Chen, Iwasaki, Beich 12
Overall
Outcome
1–12
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PETITIONER:

Michael S. Parsons
Andrew S. Ehmke
Jordan Maucotel
HAYNES AND BOONE, LLP
michael.parsons.ipr@haynesboone.com
andy.ehmke.ipr@haynesboone.com
jordan.maucotel@haynesboone.com

PATENT OWNER:

Neil Rubin
C. Jay Chung
RUSS AUGUST & KABAT
nrubin@raklaw.com
jchung@raklaw.com