Corephotonics, Ltd.

Patent Trials and Appeals Board

Jul 26, 2021

IPR2020-00489 (P.T.A.B. Jul. 26, 2021)

Trials@uspto.gov Paper 32
571-272-7822 Entered: July 26, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC.,
Petitioner,

v.

COREPHOTONICS, LTD.,
Patent Owner.
____________

IPR2020-00489
Patent 10,015,408 B2
____________

Before BRYAN F. MOORE, GREGG I. ANDERSON, and
MONICA S. ULLAGADDI, Administrative Patent Judges.

ULLAGADDI, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No 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 5 and 6 (“the challenged claims”) of U.S. Patent No.
10,015,408 B2 (Ex. 1001, “the ’408 patent”). Paper 2 (“Pet.”).
Corephotonics, Ltd. (“Patent Owner”) filed a Preliminary Response. Paper 7
(“Prelim. Resp.”).
We instituted an inter partes review of each of the challenged claims
on the ground set forth in the Petition. Paper 8 (“Institution Decision” or
“Inst. Dec.”). Patent Owner filed a Patent Owner Response (Paper 13, “PO
Resp.”), and Petitioner filed a Petitioner Reply (Paper 18, “Pet. Reply”).
Patent Owner thereafter filed a Sur-reply (Paper 20).
Oral arguments were heard on May 26, 2021, and a transcript has
been entered into the record. Paper 31 (“Tr.”). Petitioner objected to
various slides in Patent Owner’s demonstratives for the oral hearing (Paper
29) and Patent Owner similarly objected to various slides in Petitioner’s
demonstratives (Paper 30).
Petitioner has the burden of proving unpatentability of the challenged
claims by a preponderance of the evidence. 35 U.S.C. § 316(e) (2018).
Having reviewed the parties’ arguments and supporting evidence, for the
reasons discussed below, we determine that Petitioner has not demonstrated
by a preponderance of the evidence that any of the challenged claims are
unpatentable.
II. BACKGROUND
A. Related Proceedings
Petitioner and Patent Owner identify the following corresponding
district court proceeding: Corephotonics, Ltd. v. Apple Inc., Case No. 5:19-
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cv-04809-LHK (N.D. Cal.). Pet. 1–2; Paper 6, 1.1 Petitioner also notes the
filing of a related inter partes review (IPR2020-00488) challenging claims
1–4 and 7 of the ’408 patent. Pet. 2. We did not institute trial in that
proceeding. IPR2020-00488, Paper 9 (decision denying inter partes
review).
B. The ’408 Patent
The ’408 patent issued from an application that is a continuation of
U.S. Application No. 14/880,251, filed on October 11, 2015, which is a
continuation of U.S. Application No. 14/365,711, which was filed on June
16, 2014, and matured into U.S. Patent No. 9,185,291. Ex. 1001, code (63).
U.S. Application No. 14/365,711 is an application under 35 U.S.C. § 371 of
international patent application PCT/IB2014/062180, filed on June 12, 2014,
and claims priority to U.S. Provisional Application No. 61/834,486, filed on
June 13, 2013. Id. at code (60), 1:7–16.
The ’408 patent concerns a dual-aperture zoom digital camera that
operates in both still and video modes. Id. at code (57). The camera
includes a Wide sub-camera and a Tele sub-camera, each of which includes
a fixed focal length lens, an image sensor, and an image signal processor.
Id. at 3:32–35. Figure 1A, reproduced below, illustrates a dual-aperture
zoom imaging system, which is also referred to as a digital camera. Id. at
5:60–61, 6:18–20.

1 Patent Owner cites Corephotonics, Ltd. v. Apple Inc., Case No. 3:19-cv-
04809-LHK (N.D. Cal.) (Paper 6, 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 likewise erroneously
identified as “Civil Action No. 3:19-cv-4809” on its cover page.
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Figure 1A shows a dual-aperture zoom imaging system. Id.

In some embodiments, “the lenses are thin lenses with short optical
paths of less than about 9mm” and “the thickness/effective focal length
(EFL) ratio of the Tele lens is smaller than about 1.” Id. at 3:39–41. These
size specifications reflect the fact that “[h]ost device manufacturers prefer
digital camera modules to be small, so that they can be incorporated into the
host device without increasing its overall size.” Id. at 1:31–33. An
exemplary thin camera may use a lens block for the Tele lens, where the lens
block may include five lens elements. See id. at 12:44–61. Figure 9,
reproduced below, illustrates a lens block with first lens element 902 having
positive power, second lens element 904 having negative power, third lens
element 906 having positive power, fourth lens element 908 having negative
power, and fifth lens element 910 having positive or negative power. Id. at
12:54–61.
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Figure 9 shows a lens block in a thin camera. Id. at 6:12–13.

The ’408 patent discloses that in still mode, the camera performs
zoom by either fully or partially fusing Wide and Tele images, where a fused
image includes information from both Wide and Tele images. Id. at 3:44–
49. In video mode, however, the camera performs optical zoom by
switching between Wide and Tele images—i.e., without fusion—in order “to
shorten computation time requirements, thus enabling high video rates.” Id.
at 3:51–54. The invention uses the Wide sub-camera output for a low zoom
factor (ZF) and the Tele sub-camera output for a high ZF. Id. at 11:13–29.
Normally, a user sees a jump, or discontinuous image change, when
the camera switches between sub-camera output images. Id. at 10:37–39.
The ’408 patent addresses this issue by employing a “smooth transition,”
which “is a transition between cameras or [points of view] that minimizes
the jump effect,” and which “may include matching the position, scale,
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brightness and color of the output image before and after the transition.” Id.
at 10:39–45. Because “an entire image position matching between the sub-
camera outputs is in many cases impossible,” a smooth transition may
achieve position matching “only in the [region of interest] while scale
brightness and color are matched for the entire output image area.” Id. at
10:45–52.
C. Challenged Claims
Petitioner challenges claims 5 and 6 of the ’408 patent. Claim 5 is
independent, and claim 6 depends from claim 5. Independent claim 5 is
reproduced below.
5. A zoom digital camera comprising:
a) a first imaging section that includes a fixed
focal length first lens with a first field of view (FOV1) and
a first image sensor; and
b) a second imaging section that includes a fixed
focal length second lens with a second FOV (FOV2) that
is narrower than FOV, and a second image sensor, wherein
the second lens includes five lens elements along an
optical axis starting from an object starting with a first lens
element with positive power, wherein the five lens
elements further include a second lens element with
negative power, a fourth lens element with negative power
and a fifth lens element, wherein a largest distance
between consecutive lens elements along the optical axis
is a distance between the fourth lens element and the fifth
lens element, and wherein a ratio of a total track length
(TTL) to effective focal length (EFL) of the second lens is
smaller than 1.
Ex. 1001, 14:1–18.
D. Asserted Ground of Unpatentability
Petitioner challenges claims 5 and 6 as follows. See Pet. 11.
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Claims Challenged 35 U.S.C. § Reference(s)/Basis
5, 6 103 Golan2, Kawamura3, 4
In support, Petitioner relies on the declaration of Dr. José Sasián
(Ex. 1003).
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
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) 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

2 U.S. Patent Application Publication No. 2012/0026366 A1, published
Feb. 2, 2012 (Ex. 1005, “Golan”).
3 Japanese Patent Application Publication No. S58-62609, published
Apr. 14, 1983 (Ex. 1007, “Kawamura”).
4 Petitioner asserts “Kawamura was published September 14, 2006, and
issued December 20, 2011.” Pet. 12. This appears to be a mistake because
Kawamura is a published application—not an issued patent—with a
publication date of April 14, 1983. Ex. 1007, codes (11), (12), (43).
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unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (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. v.
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”) at the time of
the claimed invention would have a bachelor’s degree or the
equivalent degree in electrical and/or computer engineering,
physics, optical sciences or a related field and 2–3 years of
experience in imaging systems including optics and image
processing.
Pet. 8–9. Petitioner supports its contention with the testimony of Dr. Sasián.
Ex. 1003 ¶ 20.
Patent Owner argues that “[a] person of ordinary skill in the art
(POSITA) of the ’408 patent, at the time of the effective filing date, would
have possessed an undergraduate degree in optical engineering, electrical
engineering, or physics, with the equivalent of three years of experience in
optical design.” PO Resp. 12–13. Patent Owner supports its contention
with the testimony of Dr. Duncan Moore. Ex. 2003 ¶ 14. Patent Owner
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further contends that “the effective filing date of the ’408 patent is June 13,
2013,” and that “Apple’s expert Dr. Sasián appears to have applied the date
of June 13, 2013 in his analysis of the level of ordinary skill as well.” PO
Resp. 13 (citing Ex. 1003 ¶ 19).
The parties do not appear to dispute the effective filing date of the
challenged claims and each rely on June 13, 2013, the earliest claimed
priority date of the ’408 patent, as the effective filing date in making their
respective arguments. Accordingly, we determine the level of ordinary skill
in the art as of this date. However, if the ’408 patent is not entitled to the
filing date of the provisional application from which it claims priority and is,
instead, entitled to a later date, this would not alter the conclusions rendered
in this Decision.
Neither party argues that the level of ordinary skill is dispositive of
any issue. Further, we do not discern significant differences between the
parties’ definitions. The conclusions rendered in this Decision do not turn
on selecting a particular definition for the level of ordinary skill. We
determine that the level of ordinary skill in the art proposed by Petitioner is
consistent with the ’408 patent and the asserted prior art and as such, we
adopt and apply Petitioner’s proposal.
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 International Trade Commission, both of which follow Phillips v.
AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. See
37 C.F.R. § 42.100(b); Changes to the Claim Construction Standard for
Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
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Board, 83 Fed. Reg. 51,340, 51,341 (Oct. 11, 2018). Accordingly, we
construe each challenged claim of the ’408 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.”
37 C.F.R. § 42.100(b).
Petitioner proposes a construction for one limitation, as discussed in
detail below. Pet. 9–11. Patent Owner disagrees with Petitioner’s proposed
construction, as further detailed below. See Prelim. Resp. 15–17; PO Resp.
13–16.
“smooth transition”
Dependent claim 6 recites “the camera controller configured to
provide video output images with a smooth transition when switching
between a lower zoom factor (ZF) value and a higher ZF value or vice
versa.” Ex. 1001, 14:21–24.
Petitioner contends “a POSITA would have understood . . . ‘smooth
transition’ to mean ‘transition with a reduced discontinuous image change,’
for example, a transition with a continuous image change.” Pet. 10 (citing
Ex. 1003 ¶¶ 44–47). Petitioner asserts the Specification supports this
proposed construction. Id. at 10–11. In our Institution Decision, we rejected
Petitioner’s proposed construction and preliminarily concluded that “smooth
transition” means “a transition between cameras or points of view that
minimizes the jump effect.” Inst. Dec. 11. In its Petitioner Reply, Petitioner
asserts that
[i]n the context of claim 6 of the subject ’408 Patent, the language
of “a transition between cameras or points of view” in the
construction for “smooth transition” is redundant and
unnecessary, because claim 6 itself provides “a smooth transition
when switching between a low zoom factor (ZF) value and a
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higher ZF value or vice versa.” Given the language of the claim,
Petitioner’s proposed construction is entirely consistent with that
adopted in the Institution Decision, and Petitioner’s analysis
applies to either construction.
Pet. Reply 2 (citing Ex. 1001, 14:22–24; Ex. 1013 ¶¶ 4–5).
Patent Owner disputes Petitioner’s proposed construction for “smooth
transition.” PO Resp. 13–16. Patent Owner contends that “the term ‘smooth
transition’ should be construed as ‘a transition that minimizes the jump
effect such that there is no jump in the ROI region.’” Id. at 16 (citing Ex.
2003 ¶ 44). This is a shift from its position in its Preliminary Response in
which Patent Owner contends that “‘smooth transition’ should be construed
as it was for the ’291 patent: ‘a transition between cameras or POVs that
minimizes the jump effect.’” Prelim. Resp. 17. We point out this contention
from the Preliminary Response to highlight the fact that Patent Owner’s
earlier proposed construction was an agreed-to construction from a district
court litigation for related U.S. Patent No. 9,185,291.5 See Prelim. Resp.
15–17; Ex. 2001, 2 (Joint Claim Construction and Prehearing Statement).
Based on our review of the complete record developed at trial, we
conclude that our resolution of Petitioner’s asserted ground of
unpatentability does not turn on the construction of “smooth transition” or
any other claim term. Infra §§ III.D.3–III.D.4. As such, we need not
expressly construe “smooth transition” or any other claim term to resolve the
dispute between the parties, and therefore, we do not expressly define any
claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed

5 The ’408 patent claims priority to the ’291 patent. See Ex. 1001, code (63).
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only for terms that are in dispute, and only as necessary to resolve the
controversy).
D. Obviousness over Golan and Kawamura
Petitioner contends that claims 5 and 6 are unpatentable as obvious
under 35 U.S.C. § 103 over Golan and Kawamura. Pet. 13–56. For the
reasons that follow, we determine that the evidence does not sufficiently
support Petitioner’s arguments, and thus Petitioner does not establish the
unpatentability of claims 5 and 6 by a preponderance of the evidence.
1. Overview of Golan (Ex. 1005)
Golan concerns a “method for continuous electronic zoom in a
computerized image acquisition system,” in which the system has “a wide
image acquisition device and a tele image acquisition device.” Ex. 1005,
code (57). By providing “multiple image devices each with a different fixed
field of view (FOV),” Golan’s system “facilitates a light weight electronic
zoom with a large lossless zooming range.” Id. ¶ 9. Golan’s Figure 1,
reproduced below, illustrates a zoom control sub-system for an image
acquisition system. Id. ¶ 26.

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Figure 1 of Golan illustrates a zoom control sub-system for an image
acquisition system. Id.

According to Golan, “[z]oom control sub-system 100 includes a tele
image sensor 110 coupled with a narrow lens 120 having a predesigned FOV
140, a wide image sensor 112 coupled with a wide lens 122 having a
predesigned FOV 142, a zoom control module 130 and an image sensor
selector 150.” Id. ¶ 37. The zoom control module 130 selects a relevant
image sensor through image sensor selector 150 and calculates a relevant
camera zoom factor when it receives a required zoom from an operator. Id.
¶ 39. Golan’s system facilitates “continuous electronic zoom capabilities
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with uninterrupted imaging,” which “is also maintained when switching
back and forth between adjacently disposed image sensors.” Id. ¶ 40.
2. Overview of Kawamura (Ex. 1007)
Kawamura concerns a “Telephoto Lens.” Ex. 1007, code (54).
Kawamura’s lens is a “medium telephoto lens” that has, “for example, a lens
of a focal length of about 200 mm for a screen size of 6x7 or a focal length
of about 150 mm for a screen size of 4.5x6.” Id. at 1. The lens “keeps a
compactness of an overall length to a conventional level of a telephoto ratio
of about 0.96 to 0.88 but has an excellent image-formation performance due
to favorably correcting spherical aberration of both a reference wavelength
and color and also decreasing chromatic aberration in magnification.” Id.
Kawamura’s Figure 1, reproduced below, illustrates one example of a lens
system configuration. Id. at 5–6.

Figure 1 of Kawamura illustrates one example of a lens system
configuration. Id.

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According to Kawamura, the inventive lens, including the example
shown in Figure 1, is
a telephoto lens of a four-group, five-lens configuration of,
in order from an object side, a first lens, which is a
positive meniscus lens that is convex toward an object
side; a second lens and a third lens, which are a laminated
positive meniscus lens of a negative meniscus lens and a
positive meniscus lens having a lamination surface that is
convex toward the object side; a fourth lens, which is a
negative lens having a rear surface with a large curvature
that is concave toward an image-surface side; and a fifth
lens, which is a positive lens.

Id. at 1–2.
3. Analysis of Independent Claim 5
Patent Owner does not contest Petitioner’s showing that the
combination of Golan and Kawamura teaches or suggests the following
limitations of claim 5, but argues that Petitioner has failed to show that it
would have been obvious to combine these references as set forth in the
Petition. See generally PO Resp. We summarize Petitioner’s contentions
for each claim limitation to provide context for our findings and conclusion
with respect to Petitioner’s rationale for combining. As explained below, we
agree with Patent Owner that Petitioner has failed to show that it would have
been obvious to combine Golan and Kawamura.
a) Petitioner’s Element-by-Element Contentions
“A zoom digital camera comprising:”
Petitioner contends that, to the extent the preamble of independent
claim 5 is limiting, Golan teaches a zoom digital camera. Pet. 23.
Specifically, Petitioner argues Golan’s Figure 1 embodiment discloses zoom
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control sub-system 100 that includes “a tele image sensor 110 coupled with
a narrow lens 120 having a predesigned FOV 140, a wide image sensor 112
coupled with a wide lens 122 having a predesigned FOV 142, a zoom
control module 130 and an image sensor selector 150.” Id. at 24 (quoting
Ex. 1005 ¶ 37) (emphasis omitted). Petitioner explains that “[i]n Golan’s
zoom control sub-system 100, each of the Wide imaging device (including
wide image sensor 112 and wide lens 122) and the Tele imaging device
(including tele image sensor 110 and narrow lens 120) defines an aperture
for generating a corresponding digital image.” Id. at 25 (citing Ex. 1003
¶ 68). Accordingly, Petitioner asserts, “Golan’s image acquisition system
including a zoom control sub-system 100 is a digital camera providing
digital zoom.” Id.
“a first imaging section that includes a fixed focal
length first lens with a first field of view (FOV1)
and a first image sensor”
Petitioner contends that Golan teaches the first imaging section of
independent claim 5. Pet. 25–29. Specifically, Petitioner argues Golan
discloses “a first imaging section that includes a wide lens 122 (first lens)
with a FOV 142 (a first field of view (FOV1)) and a wide image sensor 112
(first image sensor).” Id. at 25 (citing Ex. 1005 ¶¶ 36–37, Fig. 1). Petitioner
asserts that Golan’s wide lens 122 has a predesigned field of view that is
fixed, and it is thus a fixed focal length lens. See id. at 26–29 (citing Ex.
1003 ¶¶ 72–73, 75–78; Ex. 1005 ¶¶ 9, 36–37, 43; Ex. 1016, 48).
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“a second imaging section that includes a fixed
focal length second lens with a second FOV (FOV2)
that is narrower than FOV, and a second image
sensor”
Petitioner contends that Golan teaches the second imaging section of
independent claim 5. Pet. 30–32. Specifically, Petitioner argues Golan
discloses “a second imaging section that includes a tele image sensor 110
(second sensor) coupled with a narrow lens 120 (a fixed focal length second
lens) having a predesigned FOV 140 (second FOV (FOV2)).” Id. at 30
(citing Ex. 1003 ¶ 79; Ex. 1005 ¶¶ 36–37, Abstract, Fig. 1). For reasons
similar to those discussed with respect to Golan’s wide lens 122, Petitioner
asserts Golan’s narrow lens 120, with a predesigned field of view, is a fixed
focal length lens. Id. at 31 (citing Ex. 1003 ¶ 80; Ex. 1005 ¶¶ 9, 36–37, 43).
Petitioner further asserts that Golan discloses “a FOV 140 (FOV2) of the
narrow lens 120 that is narrower than FOV 142 (FOV1) of the wide lens
122.” Id. (citing Ex. 1003 ¶ 81). In particular, Petitioner points to Golan’s
disclosure that “[p]referably, wide FOV 142 is substantially wider than
narrow FOV 140.” Id. (quoting Ex. 1005 ¶ 43) (emphasis omitted).
“wherein the second lens includes five lens
elements along an optical axis starting from an
object starting with a first lens element with positive
power, wherein the five lens elements further
include a second lens element with negative power,
a fourth lens element with negative power and a
fifth lens element”
Petitioner contends that the combination of Golan and Kawamura
renders obvious the lens element arrangement of the second lens of
independent claim 5. Pet. 32–37. Specifically, Petitioner argues that
Kawamura discloses a number of examples of a fixed focal length tele lens
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having five lens elements as arranged in the claim. Id. at 33 (citing Ex. 1003
¶ 84). Petitioner asserts Kawamura’s Figure 1 shows five lens elements,
which Petitioner labels L1–L5, where L1 is a positive meniscus lens; L2 and
L3 are respective negative and positive meniscus lenses and are combined to
form a laminated positive meniscus lens; L4 is a negative lens; and L5 is a
positive lens. Id. at 33–36 (citing Ex. 1003 ¶¶ 85–89; Ex. 1007, 1, 5, Fig. 1).
“wherein a largest distance between consecutive
lens elements along the optical axis is a distance
between the fourth lens element and the fifth lens
element” and
“wherein a ratio of a total track length (TTL) to
effective focal length (EFL) of the second lens is
smaller than 1”
Petitioner contends the combination of Golan and Kawamura renders
obvious the independent claim 5 feature of a largest distance between
consecutive lens elements being between the fourth and five lens elements.
Pet. 37–41. Petitioner argues that Kawamura’s Figure 1 shows that the
distance d7 between the lenses Petitioner labels as L4 and L5 is the largest
distance among all the respective distances between consecutive lenses in
Figure 1. Id. at 38–40 (citing Ex. 1003 ¶¶ 95–97; Ex. 1007, 3).
Petitioner further contends that the combination of Golan and
Kawamura renders obvious the total track length to effective focal length
ratio feature of independent claim 5. Id. at 41–44. Petitioner argues that
“Kawamura’s telephoto lens ‘keeps a compactness of an overall length to a
conventional level of a telephoto ratio of about 0.96 to 0.88.”’” Id. at 41
(quoting Ex. 1007, 1) (citing Ex. 1003 ¶ 103). Petitioner further argues that
“[a] POSITA would have understood that a telephoto ratio of Kawamura is a
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ratio of total track length (TTL)/effective focal length (EFL).” Id. (citing
Ex. 1003 ¶ 103; Ex. 1006, 169).
b) Rationale for Combining Golan and Kawamura
Petitioner presents two alternative theories––a first alternative theory
in which scaling is not involved in the combination of Golan and Kawamura
and a second alternative theory in which the combination involves scaling.
See Pet. 20–23.
(1) Petitioner’s Contentions in the Petition
Regarding its First Alternative Theory
Petitioner contends that a person of ordinary skill in the art would
have been motivated to apply Kawamura’s teachings to Golan “to produce
the obvious, beneficial, and predictable results of a digital camera including
a tele lens with a compactness of an overall length while having an excellent
image-formation performance as taught by Kawamura.” Pet. 20 (citing
Ex. 1003 ¶¶ 60–64). Petitioner supports its contention by arguing that
“Golan recognizes that a typical camera with a large dynamic zoom range
‘requires heavy and expensive lenses, as well as complex design,’ and has a
goal to provide an imaging device with ‘light weight’ electronic zoom.” Id.
at 21 (quoting Ex. 1005 ¶¶ 7–8). Petitioner further contends that “Golan
recognizes the need to provide excellent image quality by providing ‘lossless
electronic zoom’ for maintaining the desired resolution and by providing
‘continuous electronic zoom with uninterrupted imaging.’” Id. (quoting
Ex. 1005 ¶ 4, Abstract) (citing Ex. 1003 ¶ 62). Petitioner also contends that
Kawamura addresses these needs identified in Golan by providing “a
telephoto lens that ‘keeps a compactness of an overall length to a
conventional level of a telephoto ratio of about 0.96 to 0.88 but has an
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excellent image-formation performance.’” Id. (quoting Ex. 1007, 1) (citing
Ex. 1003 ¶ 62) (emphases omitted). The resulting system, Petitioner argues,
“would have been no more than the combination of known elements
according to known methods (such as modifying the tele lens 120 in [the]
zoom control subsystem of Golan according to Kawamura’s teachings). . . .”
Id. at 22. Dr. Sasián testifies that “combining the teachings of Kawamura
with the system of Golan would have produced operable results that are
predictable.” Ex. 1003 ¶ 63.
(2) Petitioner’s Contentions in the Petition
Regarding its Second Alternative Theory
Petitioner alternatively contends that “[t]o the extent that
modifications would have been needed in order to accommodate the
teachings of Kawamura in the system of Golan,” “a POSITA would have
scaled the Kawamura lens prescriptions to fit into a digital camera of Golan .
. . .” Pet. 22–23. Specifically, Dr. Sasián testifies that “lens scaling was a
well-known practice in lens design, and a POSITA would have scaled the
Kawamura lens prescriptions to fit into a digital camera of Golan while
maintaining the compactness and an excellent image-formation
performance.” Ex. 1003 ¶ 64 (citing Ex. 1006, 57; Ex. 1009, 254–355). The
cited evidence includes “Modern Lens Design: A Resource Manual,” by
Warren J. Smith (Ex. 1006), and “ZEMAX Optical Design Program User’s
Manual” (Ex. 1009). See Ex. 1006, 57 (discussing how “[a] lens
prescription can be scaled to any desired focal length simply by multiplying
all of its dimensions by the same constant” and that “[a]ll of the linear
aberration measures will then be scaled by the same factor”); Ex. 1009, 254–
255 (with respect to “scale lens,” stating that “scale will scale the entire lens
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by the specified factor,” and that “[t]his useful for scaling an existing design
to a new focal length, for example.”).
c) Patent Owner Contentions Regarding Petitioner’s Rationale for
Combining
Patent Owner contends that a person of ordinary skill in the art would
not have been motivated to combine Golan and Kawamura. PO Resp. 32–
53.
With respect to Petitioner’s first alternative theory that combining
Golan and Kawamura does not require scaling, Patent Owner argues “the
goal in Golan was to avoid ‘heavy and expensive lenses’ and to achieve
‘light weight electronic zoom.’” Id. at 32 (Ex. 1005 ¶¶ 7–9). Patent Owner
further contends that, “[i]n the context of camera design, the 7-inch
Kawamura lenses would have been considered ‘heavy,’ both in 1981 when
Kawamura was filed and in 2009 on Golan’s asserted priority date.”6 Id.
(Ex. 2003 ¶ 74). Patent Owner bases its position on “the fact that Golan
contemplates use of 5 megapixel digital sensors,” which it asserts
“commonly had dimensions of 2.7 mm x 3.6 mm or 3.6 mm x 4.8 mm,
[which are] much smaller than the 56 mm x 67 mm film size Kawamura’s
lenses were designed for.” Id. at 33 (citing Ex. 2003 ¶ 75; Ex. 2007, 4).

6 Patent Owner’s reference to 2009 as the relevant time frame for the
obviousness analysis appears to be in error. The face of the ’408 patent
shows a provisional application filed on June 13, 2013. Ex. 1001, code (60);
compare id., with Ex. 2003, 15 (Dr. Moore relying on June 13, 2013, as the
effective filing date). As explained above, we do not expressly determine
the priority date for the ’408 patent to render the conclusions in this
Decision. We rely on June 13, 2013, as the earliest possible priority date for
the ’408 patent.
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With respect to Petitioner’s second alternative theory that the
combination of Golan and Kawamura involves scaling Kawamura’s lens
assembly, Patent Owner contends that “scaling [a lens] design will also scale
the aberrations of the design and leave many dimensionless properties of the
lens design unchanged[;] that does not does not mean that the resulting
design will be practical or useful.” Id. at 34–35 (citing Ex. 2003 ¶ 78).
Patent Owner supports its position in part with an article titled “Optical
Analysis of Miniature Lenses with Curved Imaging Surfaces” co-authored
by Dr. Sasián and his student Dmitry Reshidko, which discloses that “[a]
traditional objective lens can not [sic] be simply scaled down as a lens
solution due to fabrication constraints, materials[’] properties, manufacturing
process[es], light diffraction and geometrical aberrations.” Id. at 35–36
(quoting Ex. 2008, 1). Patent Owner also points to the Ph.D. dissertation of
Dr. Sasián’s student Yufeng Yan, which according to Patent Owner discloses
“that the design approaches and lens constructions are
significantly different between a miniature camera lens and a
conventional camera lens” and that “if the conventional camera
lens was simply scaled down to the same focal length of the
miniature lens, it would encounter many issues.” Yan further
explained: “[s]caling down a conventional camera lens requires
spatial tolerances to scale down with the same ratio, which is
about the factor of 7. This creates a huge problem on the
tolerance budget of element and surface decenter.”
PO Resp. 36–37 (quoting Ex. 2013, 79, 83).
Patent Owner also cites to a Society of Photo-optical Instrumentation
Engineers (SPIE) article by Bareau et al., “The Optics of Miniature Digital
Camera Modules” (Ex. 2012, “Bareau”). Id. at 37 (citing Ex. 2012, 1, 3).
Bareau was cited in a textbook authored by Dr. Sasián, “Introduction to Lens
Design” (Ex. 2006, 195), and relied upon by Petitioner in another
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proceeding challenging another patent assigned to Patent Owner (IPR2018-
01146, Ex. 1012) in which Dr. Sasián provided expert testimony. Bareau
discloses that
When designing a camera module lens, it is not always helpful
to begin with a traditional larger-scale imaging lens. Scaling
down such a lens will result in a system that is unmanufacturable.
. . . For glass elements, the edge thicknesses will become too thin
to be fabricated without chipping. To achieve a successful
design we have to modify our lens forms and adjust the
proportions of the elements.
Ex. 2012, 1.
d) Petitioner’s Responsive Contentions Regarding its Reasons for
Combining
First, Petitioner argues that Golan’s teachings are not limited to
miniature cameras or sensors such as those used in mobile devices and thus,
would have been understood by a POSITA to “apply to imaging systems of
various sizes using any suitable image sensors.” Pet. Reply 8 (citing Ex.
1013 ¶ 16) (arguing Golan’s teachings also “include applications for
conventional digital still cameras and other commercial, industrial and
security applications including air-born vehicles/drones applications”).
In support of its position that Golan’s teachings “do[] not establish a
dimension limitation on either its imaging system or image sensors,”
Petitioner cites to products and patents of the inventors and the assignee of
Golan, NextVision Stabilized Systems, Ltd. (“NextVision”), that purportedly
“confirm” “the applicability of Golan’s teachings to applications beyond the
mobile device realm.” Pet. Reply 8.
Second, Petitioner argues that
Patent Owner’s arguments should be rejected because they
improperly rely on Golan’s example 5-Megapixel image sensor
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as a requirement, because they fail to recognize that a POSITA
would have used other sensors (e.g., of different megapixel
number or different dimensions) in Golan’s systems, and because
scaling to accommodate a sensor size was practical and with the
skill of a POSITA, as demonstrated by Dr. Sasián.
Id. at 10 (citing Ex. 1013 ¶ 18). Petitioner further characterizes Patent
Owner’s expert’s testimony as “admit[ting] that lightweight cameras may be
used in applications including drones, endoscope applications, and space
applications, without using miniature lenses as defined in the context of
cellphone.” Id. at 13 (citing Ex. 1017, 143:16–145:19, 148:16–19).
Third, Petitioner argues that a “POSITA would have understood that,
in Golan, the terms ‘heavy,’ ‘expensive,’ and ‘light weight’ are relative.” Id.
at 13 (citing Ex. 1013 ¶ 25). Petitioner explains that
Golan describes that a camera with a single optical zoom lens
having a large dynamic zoom range typically requires “heavy
and expensive lenses.” An example of such a heavy and
expensive lens is a Fujinon A36X14.5 lens, an optical zoom lens
providing a zoom ratio of 36x. The Fujinon A36X14.5 lens is
heavy with a weight of 4.58kg (about 10 pounds) and a length of
363.3 mm (about 14.3”), and is expensive (e.g., a used one priced
on eBay for over $10,000).
. . . .
. . . [C]ompared to a camera with a single Fujinon
A36X14.5 lens, according to Golan’s teachings, a POSITA could
and would have achieved light weight digital zoom of 36x by
using a wide lens and a telephoto lens (e.g., based on
Kawamura’s lens design) that are cheaper and lighter than the
Fujinon A36X14.5 lens. As such, Golan does not require using
1/4” or 1/3” miniature digital sensors to achieve a cheaper
lightweight digital zoom.
Pet. Reply 12–13 (Ex. 1005 ¶ 7; Ex. 1028, 1; Ex. 1027, 1; Ex. 1013 ¶ 23).
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Fourth, Petitioner contends that “Patent Owner’s analysis is incorrect
because it is based on a POSITA’s understanding of technology in 1981 and
incorrect understanding of ongoing relevance of older lens designs.” Id. at
20 (emphasis omitted). Petitioner characterizes Patent Owner’s argument as
“imply[ing] that designs from 1981 would be wholly outdated by 2013,” and
asserts that “lens designs remain relevant designs to a POSITA for many
decades.” Id. at 21 (citing Ex. 1013 ¶ 39; Ex. 1025, 359–366 (textbook
titled “Modern Lens Design” from 2005 allegedly including example
telephoto lens designs from 1950, 1977, and 1982)). Petitioner further
argues that “[b]ecause Patent Owner incorrectly relies on a[] POSITA’s
knowledge of the technology in 1981, [Patent Owner] fails to consider the
ongoing relevance of older lens designs with modern lens design, and fails to
evaluate prior art as a POSITA at the time the invention was made . . . .” Id.
e) Analysis of Rationale for Combining
For the reasons that follow, we determine that Petitioner’s rationale
for combining Golan and Kawamura, under either its first alternative theory
or its second alternative theory, is not supported by sufficient rational
underpinning.
(1) Petitioner’s First Alternative Theory
Without Scaling
We are not persuaded that Petitioner’s evidence sufficiently supports
its rationale for combining Golan and Kawamura and a finding that one of
ordinary skill in the art at the time of the earliest priority date of the ’408
patent would have understood Kawamura’s lens assembly to have
“compactness of an overall length” such that Kawamura’s lens assembly
would have been understood to address the needs identified in Golan and its
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“goal to provide an imaging device with ‘light weight’ electronic zoom,” as
Petitioner contends. Pet. 20–21 (quoting Ex. 1005 ¶¶ 7–8; Ex. 1007, 1)
(citing Ex. 1003 ¶¶ 60–64) (emphases added).
With regard to Petitioner’s first argument, there is insufficient
evidence of record to support the proposition that Golan’s teachings are
applicable to imaging systems that are of a scale larger than that of the
miniature cameras and image sensors used in mobile devices. According to
Petitioner, a “POSITA’s understanding of the applicability of Golan’s
teachings to applications beyond the mobile device realm is confirmed by
other disclosures from Golan’s inventors and assignee, NextVision. . . .”
Pet. Reply 8 (citing Ex. 1013 ¶ 17). Petitioner then cites exhibits and patents
purporting to show products of the assignee of Golan, NextVision. Pet.
Reply 8–9 (citing Exs. 1022, 1024, 1026, 1030, 1034, 1035). Dr. Sasián’s
testimony in paragraph 17 of his Reply Declaration also relies on these
exhibits and patents. Ex. 1013 ¶ 17; see id. ¶¶ 21, 28 (citing Exs. 1029,
1031, 1032).
As an initial matter, the fact that the assignee of the Golan reference
produces products having imaging systems of varying sizes does not,
without more, suggest that Golan’s teachings, specifically, are applicable to
these products or vice versa.7 Cf. Abbott Labs. v. Dey, L.P., 287 F.3d 1097,
1104 (Fed. Cir. 2002) (finding the relationship between

7 We do not discern that an assignee’s products would be relevant to the
scope of a patent that is not asserted to cover those products and does not
discuss those products in its specification. Cf. See Astrazeneca AB v. Mut.
Pharm. Co., 384 F.3d 1333, 1340 (Fed. Cir. 2004) (discussing disavowal of
claim scope through criticism of other products in the general summary or
description of the invention).
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two unrelated patents, although having common subject matter, a common
inventor, and the same assignee, “insufficient to render particular arguments
made during prosecution of [one of the patents] equally applicable to the
claims of [the other patent]”). In fact, these exhibits regarding NextVision’s
products do not sufficiently establish––either alone or in combination with
Dr. Sasián’s testimony––that a person of ordinary skill in the art would have
understood from the exhibits that Golan’s teachings apply to image sensors,
imaging systems, and lens assemblies of all sizes.
Dr. Sasián’s reliance on the exhibits is conclusory. See, e.g., Ex. 1013
¶¶ 16, 17, 21, 28. Dr. Sasián’s testimony regarding the exhibits simply lists
them, describes their subject matter, and concludes that they confirm “the
applicability of Golan’s teachings to applications other than only mobile
devices . . . .” Id. ¶ 17. Below we provide a summary of the references
relied on by Petitioner and Dr. Sasián in order to support our finding that
none of the exhibits adequately support Petitioner’s contentions and Dr.
Sasián’s testimony as to Golan and its purported applicability to image
sensors, imaging systems, and lens assemblies of all sizes.
Exhibit 1022 is U.S. Patent No. 8,896,697 B2 to Golan et al. (“Golan
’697”) and is titled “Video Motion Compensation and Stabilization
Gimbaled Imaging System.” Ex. 1022, codes (76), (54). Golan ’697
discloses as its field of invention “an imaging system, operatively mounted
on an air-born vehicle, that can transmit high resolution images of a selected
region of interest, whereas the images are continuously compensated for
vehicle motion.” Id. at 1:14–18.
Exhibit 1024 is an article titled “IAI [(Israel Aircraft Industries)]
Unveils the Ghost – a Miniature UAV [(Unmanned Aerial Vehicle)] For
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Special Operations” by Tamir Eshel dated August 8, 2011 (“Eshel”). It
depicts “twin rotors [that] create adequate lift within a relatively small
diameter (0.75 cm/2.46 ft), enabling the Ghost [UAV] to navigate safely
near obstacles, enter through windows and hover inside built-up areas or
penetrate dense vegetation.” Ex. 1024, 1–2.
Exhibit 1026 is a screen capture of NextVision’s website and product
MicroCam-D, an aerial photography camera. Ex. 1026, 1. It describes
MicroCam-D as being 4.6 ounces and capable of performing digital zoom.
Id. at 2. It also includes images of other NextVision products such as drone
detection cameras, optical emission cameras, and other aerial photography
cameras. Id. at 3–5.
Exhibit 1029 is a product manual for Kodak’s EasyShare V610 dual
lens digital camera (“Kodak EasyShare”) which Dr. Sasián cites to show that
“[a] POSITA would have understood that image sensors of different
dimensions, for example, a 1/2.5” sensor, may be used in Golan,” and
contends that Kodak EasyShare has “a dual lens digital camera to provide a
5.3-megapixel image.” Ex. 1013 ¶ 21.
Exhibit 1030 is an article from a global news service, Unmanned
Aircraft Systems (UAS) Vision, titled “Lightweight UAS Demand
Accelerates Development of Lightweight Payloads.” The article describes
how the “near future . . . will see smaller payloads achieved within radar[,]
laser[,] and thermal systems” on the order of less than 100 grams. Ex. 1030,
3. The article expresses that such developments “are causing a change in the
operational concept of UAS.” Id.
Exhibit 1031 is U.S. Patent No. 8,462,209 B2 to Sun and is titled
“Dual-swath Imaging System” (“Sun”). It discloses “[a] portable, aerial,
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dual-swath photogrammetric image system comprising twin nadir pointing
CCD cameras for simultaneously acquiring twin adjacent digital images for
merging into a large panorama.” Ex. 1031, codes (54), (57). Sun further
discloses “a first lens shift mount . . . for physically shifting [a] first large
format optical lens” and “a second lens shift mount . . . for shifting the focal
point of said second large format optical lens . . . .” Id. at 10:32–38, 10:47–
54.
Exhibit 1032 is U.S. Patent No. 7,974,460 B2 to Elgersma and is titled
“Method and System for Three-dimensional Obstacle Mapping for
Navigation of Autonomous Vehicle” (“Elgersma”). Ex. 1032, code (54).
Elgersma discloses “an autonomous vehicle with an image capturing device,
and focusing the image capturing device at a predetermined number of
different specified distances to capture an image at each of the specified
distances.” Id. at code (57). Dr. Sasián cites Sun and Elgersma in support of
the testimony that “a POSITA would have used image sensors of various
dimensions, including sensors with sizes similar to a film size of Kawamura,
that are suitable for applications,” specifically, unmanned aerial vehicles.
Ex. 1013 ¶ 28 (citing Ex. 1031, 2:31–45; Ex. 1032, 1:10, 1:25–26).
Exhibit 1034 is a video capture showing navigation to and through
NextVision’s website as of September 2, 2012, using the Internet Archive’s
Wayback Machine. The video capture shows footage shot by NextVision’s
MicroCam-D product. The video appears to show the MicroCam-D camera
zooming in on targets and is annotated with the caption “digital zoom” at
various points, in particular, at approximately 1:45 minutes.
Exhibit 1035 is a screen capture of a profile for NextVision describing
the company as privately owned and “focusing on development and
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production of Electro-Optical stabilized payload and solid state digital
cameras for day and night observation.” Ex. 1035, 1. It describes
NextVision’s MicroCam-D product as the world’s first sub 100-gram, gyro-
stabilized payload. Id.
Petitioner does not point to any portion of these exhibits that mentions
Golan or the invention described therein. See generally Pet. Reply. Nor
does Petitioner point to evidence that sufficiently addresses the applicability
of Golan’s specific teachings to any particular product or imaging system
described in the cited exhibits. Id. Dr. Sasián’s Reply Declaration does not
offer perspective or sufficient explanation as to how a POSITA would have
understood these exhibits to support his testimony and conclusions. In
particular, Petitioner does not show sufficiently that the imaging systems in
any of these exhibits achieve “light weight electronic zoom” using “two
fixed focal length lenses and ‘two (or more) image sensors, having different
fixed FOVs’” “with a large lossless zooming range,” as Dr. Sasián testifies
that Golan teaches. Ex. 1013 ¶ 24 (citing Ex. 1005 ¶ 9). Below, we explain
why Dr. Sasián’s testimony––which mostly touches on Golan ’697 and
MicroCam-D––is insufficient to support a finding that any alleged multiple
image sensors in Golan ’697 or alleged digital zoom capability in
NextVision’s MicroCam-D described in Exhibits 1026 and 1034 correspond
to the specific device and method taught by Golan.
During his deposition, with respect to the disclosure of “a high
resolution image sensor” and “a multi-megapixel CMOS” in Golan ’697
(Ex. 1022), Dr. Sasián testified that the “optical zoom” in Golan ’697 “could
refer to either a single lens or two lenses” and cited its claim 27 as support
for the proposition that Golan ’697 discloses “one or more image sensor
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arrays.” Ex. 2015, 97:4–8, 98:18–99:10. However, Dr. Sasián stopped short
of concluding that Golan ’697 teaches “two fixed focal length lenses” and
“two (or more) image sensors, having different FOVs” as he does with
Golan (Ex. 1013 ¶ 24):
MR. RUBIN: So would you agree that the Golan ’697 patent,
Exhibit 1022, never says to use sensors having different angles
of view in order to provide a zoom?
MS. SHI: Objection. Out of the scope of the declaration.
DR. SASIÁN: Well, I cannot -- At this moment, I cannot find a
mention of different fields of view.
Ex. 2015, 99:14–22. Accordingly, Dr. Sasián’s testimony demonstrates that
he has not affirmatively testified that Golan ’697 teaches sensors having
different FOVs, which the accompanying objection of Petitioner’s counsel
further supports. Id. Independent from this deposition testimony, a review
of Dr. Sasián’s Second Declaration confirms that Dr. Sasián did not testify
on whether Golan ’697 has different fields of view, and further, whether any
exhibit has “light weight electronic zoom” using “two fixed focal length
lenses and ‘two (or more) image sensors, having different fixed FOVs’”
“with a large lossless zooming range,” as Dr. Sasián testifies that Golan
teaches. See generally Ex. 1013; Ex. 1013 ¶ 24 (citing Ex. 1005 ¶ 9).
With respect to the exhibits describing NextVision’s MicroCam-D
product, Dr. Sasián testified that MicroCam-D “may include more than one
camera as the specifications teach camera in plural, cameras.” Id. at 93:2–5.
Dr. Sasián further testified that he did not know whether MicroCam-D
utilized a mechanical zoom, and consequently stopped short of determining
that MicroCam-D includes “two fixed focal length lenses” and “two (or
more) image sensors, having different FOVs” as he did with Golan. Id. at
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95:2–11; compare id. with, Ex. 1013 ¶ 24. When asked about the specific
relevance of MicroCam-D to Golan, Dr. Sasián testified as follows:
MR. RUBIN: What does the MicroCam-D have to do with the
Golan patent that you rely on as prior art in this IPR?
DR. SASIÁN: Well, the point I’m bringing up is that there are
applications where Golan’s disclosure may be relevant, may be
applicable. That is the point.
Ex. 2015, 91:6–11.
During his deposition, Dr. Sasián did not rule out using mechanically
moving parts to achieve optical zoom in MicroCam-D, which is a subject of
multiple exhibits cited by Petitioner. Id. at 94:15–95:10. We consider this
inquiry relevant to whether Dr. Sasián testifies that any of the exhibits have
“light weight electronic zoom” using “two fixed focal length lenses and ‘two
(or more) image sensors, having different fixed FOVs’” because
mechanically moving parts are something Golan avoids with its two fixed
focal length lenses having different fields of view. Ex. 1013 ¶ 24 (citing Ex.
1005 ¶ 9); 1005 ¶¶ 7–9. As Dr. Moore explains,
Traditionally, zoom capability was provided using mechanical
optical zooming, moving lens elements relative to each other to
change the focal length, and thus the magnification of the lens.
Mechanical optical zoom lenses are generally more expensive
and larger than fixed focal length lenses. Another approach to
zoom is digital zooming, where a digital processor provides a
magnification effect by cropping the image from a fixed focal
length lens and interpolating between the pixels to create “a
magnified but lower-resolution image.”
An alternative to both mechanical and traditional digital zoom is
described in the ’408 patent. In the ’408 patent, an improved
digital zoom is provided using a “dual-aperture” configuration.
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Ex. 2003 ¶¶ 28, 29 (citing Ex. 1001, 1:45–49; 1:54, 3:30–32). Even with
respect to the exhibits disclosing digital zoom cited by Petitioner after our
Institution Decision, the record does not sufficiently support a finding that
there is any disclosure of two image sensors that have different fields of
view with fixed focal length lenses. See, e.g., Ex. 2015, 99:14–22.
Petitioner also does not make any such representations in its Reply. See
generally Pet. Reply.
For the reasons discussed above, and particularly with respect to the
digital zoom capability of the MicroCam-D camera described in Exhibits
1026 and 1034, the record does not contain sufficient evidence to support a
finding that this capability corresponds to the specific method taught by
Golan. Nor does the record sufficiently establish that the digital zoom
method taught by Golan would have been understood by a POSITA to be the
only method––or even one of a few methods––conceivably applicable to
MicroCam-D or any other imaging system described in the exhibits cited by
Petitioner, to provide the asserted functionality. Petitioner does not explain
adequately why we should interpret Golan based on extrinsic evidence that
does not “link” the teachings of Golan with any NextVision product or
invention. As discussed above, we find Petitioner’s contentions and Dr.
Sasián’s testimony conclusory.
With regard to Petitioner’s second responsive contention, Petitioner
characterizes Patent Owner’s argument as limiting the teachings of Golan to
the disclosed 5 megapixel image sensor array. Pet. Reply 10–11. We do not
agree with Petitioner’s characterization of Patent Owner’s argument. We
understand Patent Owner’s reference to the 5 megapixel image sensor array
disclosed in Golan as providing the only context in the record for the scale
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of device or device components to which Golan’s teachings are applied. PO
Resp. 8–9; Ex. 1005 ¶ 4. The disclosure of the 5 megapixel image sensor
array in Golan supports the finding that Golan is at least applicable to
miniature digital cameras and image sensors such as those used in mobile
devices. Ex. 1005 ¶ 4. As discussed above, there is no disclosure or
evidence that discloses that Golan’s teachings are applicable to larger-scale
imaging systems, nor is there evidence of record that sufficiently supports a
finding that a POSITA would have understood Golan’s teachings to be
applicable to larger-scale imaging systems, such as those of the size able to
accommodate a lens assembly of size disclosed in Kawamura.
With regard to Petitioner’s third responsive contention that a
“POSITA would have understood that, in Golan, the terms ‘heavy,’
‘expensive,’ and ‘light weight’ are relative,” the record does not support a
finding that a POSITA would have understood these terms to be relative to a
lens assembly of the size taught by Kawamura or of the size of the Fujinon
lens. the 5 megapixel image sensor array is the only disclosure in Golan
which might indicate to a POSITA what scale of lens assembly Golan’s
teachings would be applicable to. Id. Instead, we determine that a POSITA
would have understood these terms to be relative to what is disclosed in
Golan, which is a miniature digital camera, and correspondingly-sized image
sensors (e.g., 1/4” or 1/3” miniature digital sensors). See Ex. 2003 54 (Dr.
Moore testifying that a “POSITA . . . in 2013, would have understood that a
5 megapixel sensor was likely to be a 1/3-inch or 1/3-inch sensor . . . .)
With regard to Petitioner’s fourth responsive contention that Patent
Owner improperly discounts Kawamura’s teachings as no longer relevant as
of Golan’s priority date because Patent Owner is relying on the level of skill
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in the art as of Kawamura’s priority date of 1981, we do not view Patent
Owner’s arguments in the same way. Petitioner is correct in that the
relevant level of skill in the art is not the timeframe associated with
Kawamura––what constitutes “lightweight” or “compact” must be evaluated
through the eyes of a POSITA as of the priority date of the ’408 patent. We
understand Petitioner to take the position that Kawamura’s lens assembly is
lightweight compared to some other lens assemblies––like the nearly ten
pound Fujinon A36X14.5 lens. As discussed above, even assuming,
arguendo, that “lightweight” is a relative term, Petitioner does not present
sufficient evidence that a POSITA at the time of the priority date of the ’408
patent (which could be as early as June 13, 2013 (see Ex. 1001, code (60))
would have thought of Kawamura’s 7-inch lens assembly as “lightweight”
or “compact”––particularly in the absence of any size or weight-related
information for comparison in Golan and Golan’s disclosure of only a “5
megapixel image sensor array” (see Ex. 1005 ¶ 4).
(2) Petitioner’s Second Alternative Theory with
Scaling
We are not persuaded that Petitioner’s evidence sufficiently supports
its rationale for combining Golan and Kawamura and a finding that one of
ordinary skill in the art at the time of the earliest priority date of the ’408
patent would have understood Kawamura’s lens assembly to be compact in
length or that Kawamura’s lens assembly would have been understood to
address the needs identified in Golan and Golan’s “goal to provide an
imaging device with ‘light weight’ electronic zoom,” as Petitioner contends
(supra §§ III.D.3.e.1), particularly if it would have been necessary to scale
Kawamura’s lens assembly in order to modify Golan’s teachings in
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Petitioner’s proposed combination. Pet. 20–23 (quoting Ex. 1005 ¶¶ 7–8;
Ex. 1007, 1) (citing Ex. 1003 ¶¶ 60–64) (emphasis added). We are further
not persuaded that a “POSITA would have scaled the Kawamura lens
prescriptions to fit into a digital camera of Golan while maintaining the
compactness and an excellent image-formation performance.” Ex. 1003 ¶
64 (citing Ex. 1006, 57; Ex. 1009, 254–355) (emphasis added).
We credit the testimony of Dr. Moore that a person of ordinary skill in
the art would not have been motivated to scale Kawamura for use in Golan.
See, e.g., PO Resp. 33–34 (citing Ex. 2003 ¶ 76). Dr. Moore’s testimony is
supported by the 28-year difference between the Golan and Kawamura
inventions and the resulting improvement in performance over
decades-earlier, high-quality lenses. Id. Dr. Moore also explains that the
“Kawamura lens would need to be scaled down by a factor of around 14x to
20x in order provide the same field of view” as Golan. Ex. 2003 ¶ 77 (citing
Ex. 2005, 47:24–48:3 (Dr. Moore testifying that Dr. Sasián agrees, in his
deposition testimony, with a scaling factor of at least 10).
We also credit Dr. Moore’s testimony that “[a] POSITA would not
have been motivated to go beyond [the] rich literature of miniature lens
designs and try scaling old lenses, designed for different purposes, with little
reason to expect the result would be manufacturable.” Ex. 2003 ¶ 87.
Moreover, Patent Owner has impeached Dr. Sasián’s testimony by pointing
to positions he has accepted in the past that contradict his testimony in the
present proceeding. For example, Dr. Sasián’s testimony that the
combination of Golan and Kawamura would have been understood to be
scalable is contradicted by his article that states that a POSITA would have
been dissuaded from scaling a conventional camera lens or traditional
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objective lens due to “fabrication constraints, materials[’] properties,
manufacturing process[es], light diffraction and geometrical aberrations.”
Ex. 2008, 1. Neither Petitioner nor Dr. Sasián sufficiently explains the
contradiction; see also Ex. 2013, 79, 83 (Dr. Sasián’s student’s Ph.D.
dissertation discussing issues associated with scaling down a conventional
lens and required spatial tolerances). Bareau, an article cited in one of Dr.
Sasián’s textbooks (Ex. 2006, 195), also discusses manufacturing and
fabrication constraints with regard to scaling “a traditional larger-scale
imaging lens.” Ex. 2012, 1.
(3) Remainder of Petitioner’s Reasons for
Combining Golan and Kawamura
The remainder of Petitioner’s reasons for combining are also
insufficient to support a conclusion of obviousness. For example,
Petitioner’s contentions that Golan and Kawamura are analogous art, share a
common objective, and would have produced operable results that are
predictable are insufficient to support a conclusion of obviousness. Pet. 20–
22 (arguing that “the references are analogous prior art and are in the same
field of endeavor pertaining to imaging systems including a telephoto lens,”
that “they share a need to provide a compact and light weight imaging
system while providing excellent image [quality],” and that the combination
“would have been no more than the combination of known elements
according to known methods”).
Although yielding predictable results can, in some situations, sustain a
conclusion of obviousness, Petitioner’s contention of predictable results is
too generic and not sufficiently explained or supported to sustain a
conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
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2006) (“[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”).
During the hearing, Patent Owner’s counsel noted that “you don’t
necessarily have to show that that combination would be best, but you do
have to provide a motivation to combine with a particular reference.” Tr.
44:5–10. We take this opportunity to clarify that we are not requiring
Petitioner to point out why Kawamura teaches a better telephoto lens than
that of the universe of other telephoto lens assemblies. Patent Owner
contends––and Petitioner disputes––that there was a “sea” of telephoto lens
patents as of the relevant timeframe. Whether or not there were a “sea” as
Patent Owner contends, there were more than a small number of predictable
solutions, which even Petitioner’s declarant acknowledges. See Ex. 2015,
114:14–18 (Dr. Sasián’s testimony acknowledging there were several, well-
known “lens designs that were publicly known for telephoto and miniature
cameras” during the relevant timeframe). We further note that there is
insufficient evidence of record to support a finding that a POSITA would
have understood that there were only a few options for telephoto lens
designs from which to choose such that Kawamura’s lens assembly would
have been the “obvious” choice. Cf. Procter & Gamble Co. v. Teva Pharm.
USA, Inc., 566 F.3d 989, 996 (Fed. Cir. 2009) (“When a person of ordinary
skill is faced with ‘a finite number of identified, predictable solutions’ to a
problem and pursues ‘the known options within his or her technical grasp,’
the resulting discovery ‘is likely the product not of innovation but of
ordinary skill.’”).
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Petitioner argues that the term “conventional” in Kawamura refers to
the telephoto ratio and not the “compactness of an overall length.” Pet.
Reply 18–19 (citing Ex. 1007, 1). Even assuming, arguendo, that the term
“conventional” as disclosed in Kawamura does not apply to the length of
Kawamura’s lens assembly and instead applies only to Kawamura’s
telephoto ratio, that still would not alter our finding that a POSITA would
not have considered Kawamura to disclose a “lightweight” or “compact”
lens assembly as of the earliest priority date of the ’408 patent. We are not
persuaded for the same reason discussed above, that in the absence of a
comparison between two imaging systems of differing sizes in Golan, the
record supports a finding that “lightweight” would have been understood to
refer to a larger-scale imaging system capable of accommodating a lens
assembly of the size disclosed in Kawamura.
For the foregoing reasons, we are not persuaded that Petitioner’s
rationale for combining Golan and Kawamura is supported by sufficient
rational underpinning. As such, we conclude that Petitioner has not shown
by a preponderance of the evidence that independent claim 5 is unpatentable
over the combination of Golan and Kawamura.
4. Analysis of Dependent Claim 6
As Petitioner’s arguments for dependent claim 6 rely on the same
rationale for combining as presented with respect to independent claim 5, we
conclude that Petitioner has not established by a preponderance of the
evidence that dependent claim 6 is unpatentable under 35 U.S.C. § 103 over
the combination of Golan and Kawamura.
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E. Petitioner’s and Patent Owner’s Objections to Demonstratives
Petitioner objects to various slides in Patent Owner’s demonstratives
for the oral hearing. Paper 29. Patent Owner objects to various slides in
Petitioner’s demonstratives for the oral hearing. Paper 30. As we do not
rely on the demonstratives to reach the conclusion rendered in this Decision,
we do not address either party’s objections. Both Petitioner’s and Patent
Owner’s objections to the demonstratives are dismissed as moot.
IV. CONCLUSION
For the foregoing reasons, we conclude that Petitioner has not
established by a preponderance of the evidence that claims 5 and 6 of the
’408 patent are unpatentable. In summary:
Claim(s) 35 U.S.C. § References/Basis
Claims Shown
Unpatentable
Claims Not
Shown
Unpatentable
5, 6 103 Golan, Kawamura 5, 6
Overall
Outcome 5, 6

V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 5 and 6 of the ’408 patent have not been
shown to be unpatentable;
FURTHER ORDERED that Petitioner’s objections to the
demonstratives are dismissed as moot;
FURTHER ORDERED that Patent Owner’s objections to the
demonstratives are dismissed as moot; and
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FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:
David W. O’Brien
Andrew S. Ehmke
Hong Shi
HAYNES AND BOONE, LLP
david.obrien.ipr@haynesboone.com
andy.ehmke.ipr@haynesboone.com
hong.shi.ipr@haynesboone.com

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