Corephotonics, Ltd.

Patent Trials and Appeals Board

Nov 2, 2021

IPR2020-00878 (P.T.A.B. Nov. 2, 2021)

Trials@uspto.gov Paper 29
571-272-7822 Date: November 2, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APPLE INC.,
Petitioner,
v.
COREPHOTONICS, LTD.,
Patent Owner.

IPR2020-00878
Patent 10,330,897 B2

Before BRYAN F. MOORE, MONICA S. ULLAGADDI, and
JOHN R. KENNY, Administrative Patent Judges.
MOORE, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
35 U.S.C. § 318(a)

I. INTRODUCTION
Apple, Inc. (“Petitioner”) requested an inter partes review (“IPR”) of
claims 1–6 and 8–30 (the “challenged claims”) of U.S. Patent No.
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10,330,897 B1 (Ex. 1001, “the ’897 patent”). Paper 1 (“Petition” or “Pet.”).
Corephotonics, Ltd. (“Patent Owner”) did not file a Preliminary Response.
On November 3, 2020, we instituted trial. Paper 7 (“Inst. Dec.” or
“Decision to Institute”). Patent Owner filed a Response. Paper 12 (“PO
Resp.”). Petitioner filed a Reply. Paper 14 (“Pet. Reply”). Patent Owner
filed a Sur-Reply. Paper 19 (“Sur-Reply”). An oral argument was held on
June 9, 2021, and a transcript was entered into the record. Paper 28 (“Tr.”).
We have jurisdiction to conduct this inter partes review under
35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C.
§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, we
determine that Petitioner has shown, by a preponderance of the evidence,
that claims 1, 2, 4–6, 9–15, 17, 18, 20–23, and 25–29 of the ’897 patent are
unpatentable and that Petitioner has not shown, by a preponderance of the
evidence, that claims 3, 8, 16, 19, 24, and 30 of the ’897 patent are
unpatentable.
II. BACKGROUND
A. The Challenged Patent (Ex. 1001)
The ’897 patent issued on June 25, 2019, based on an application filed
May 10, 2018, which claimed priority back to a provisional application filed
Nov. 19, 2017. Ex. 1001, codes (22), (45), (63). The ’897 patent concerns
an optical lens assembly with five lens elements. Id. at code (57). Figure
1A of the ’897 patent is reproduced below.
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Figure 1A of the ’897 patent illustrates an arrangement of lens
elements in a first embodiment of an optical lens system.
In order from an object side to an image side, optical lens assembly
100 comprises: 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, with an image side surface marked 104b; third
plastic lens element 106 with negative refractive power having a concave,
object-side surface 106a, with an inflection point and a concave image-side
surface 106b; fourth plastic lens element 108 with positive refractive power
having a positive meniscus with a concave, object-side surface 108a and an
image-side surface marked 108b; fifth plastic lens element 110 with negative
refractive power having a negative meniscus with a concave, object-side
surface 110a and an image-side surface marked 110b. Id. at 3:24–41.
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In Table 1, reproduced below, the ’897 patent discloses radii of
curvature, R, for the lens elements, lens element thicknesses and/or distances
between each of the lens elements, and a refractive index, Nd, for each lens
element.

Table 1 of the ’897 patent sets forth optical parameters for the optical lens
assembly.
Id. at 4:35–50. The ’897 patent discloses that, in Table 1, reproduced above
[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 4:14–50.
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Challenged claims 1 and 17 are independent. Challenged claims 2–6
and 8–16 depend directly or indirectly from claim 1 and challenged claims
18–30 depend directly or indirectly from claim 17. Independent claim 1 is
reproduced below.
1. A lens assembly, comprising:
a plurality of lens elements arranged along an optical axis and spaced
apart by respective spaces,
wherein the lens assembly has an effective focal length (EFL), a total
track length (TTL) of 6.5 millimeters or less and a ratio TTL/EFL<1.0,
wherein the plurality of lens elements includes, in order from an object
side to an image side, a first group comprising lens elements L1_1, L1_2
and L1_3 with respective focal lengths f1_1, f1_2 and f1_3 and a second
group comprising lens elements L2_1 and L2_2,
wherein the first and second groups of lens elements are separated by a
gap that is larger than twice any other gap between lens elements,
wherein lens element L1_1 has positive refractive power and lens
element L1_2 has negative refractive power and
wherein lens elements L2_1 and L2_2 have opposite refractive powers.
Id. at 8:21–36.
B. Asserted Grounds of Unpatentability
Petitioner advances the following challenges supported by the
declaration of Dr. José Sasián (Ex. 1003).
Claim(s)
Challenged
35 U.S.C. §1 Reference(s)/Basis
1, 4, 9–15, 17, 20,
25–29
102 U.S. Patent No. 9,128,267 to Ogino
et al. (“Ogino,” Ex. 1005)

1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(September 16, 2011) (“AIA”), included revisions to 35 U.S.C. §§ 102 and
103 that became effective on March 16, 2013. Because the ’897 patent
issued from an application filed after March 16, 2013, we apply the AIA
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Claim(s)
Challenged
35 U.S.C. §1 Reference(s)/Basis
2, 5, 6, 18, 21–23 103 Ogino and The Optics of Miniature
Digital Cameras by Jane Bareau et
al., SPIE Proceedings Volume 6342,
International Optical Design
Conference 2006; 63421F (2006)
(“Bareau”, Ex. 1012).
3, 8, 19, 24 103 Ogino, Bareau, and U.S. Patent No.
9,128,267 to Kingslake, Optics in
Photography, 1992 (“Kingslake,”
Ex. 1013)
16, 30 103 U.S. Patent No. 10,324,273 to Chen
et al. (“Chen,” Ex. 1020), and U.S.
Patent No. 9,678,310 to Iwasaki et
al. (“Iwasaki,” Ex. 1009), and
Polymer Optics: A Manufacturer’s
Perspective on the Factors that
Contribute to Successful Programs
by Beich et al. (“Beich,” Ex. 1007)

Pet. 8–10.
Patent Owner submits the Declaration of Tom D. Milster, Ph.D.
(Ex. 2001) in support of its arguments.
C. Related Matters
The ’897 patent is asserted in Corephotonics Ltd. v. Apple Inc., 5-19-
cv-04809 (N.D. Cal.) filed August 14, 2019. Pet. 1; Paper 6, 1.
U.S. Patent No. 9,897,712 (“the ’712 patent”), 9,402,032 (“the ’032
patent”), 9,857,568 (“the ’568 patent”), and 10,324,277 (“the ’277 patent”)
are part of a chain of continuity that includes PCT/IB2014/062465, from
which the ’897 patent also claims priority. This proceeding is related to

versions of the statutory bases for unpatentability. See Ex. 1001, codes (22),
(60), (63).
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IPR2018-01146 (“the ’1146IPR”), an inter partes review proceeding
instituted based on Petitioner’s challenge to the ’712 patent. The ’1146IPR
Final Written Decision was affirmed-in-part and remanded by the Federal
Circuit. This proceeding is also related to IPR2018-01140 (“the ’1140IPR”),
an inter partes review proceeding instituted based on Petitioner’s challenge
to the ’032 patent. This proceeding is also related to IPR2019-00030 (“the
’0030IPR”), an inter partes review proceeding instituted based on
Petitioner’s challenge the ’568 patent. Each of those IPRs resulted in a Final
Written Decision and were affirmed by the Federal Circuit on October 25,
2021. Presently pending is IPR2020-00897, an inter partes review
proceeding based on Petitioner’s challenge to the ’277 patent.
D. Real Parties-in-Interest
Petitioner identifies Apple Inc. as the real party-in-interest. Pet. 1.
Patent Owner identifies Corephotonics, Ltd. as the real parties-in-interest.
Paper 6, 1.
III. ANALYSIS
A. Principles of Law
Petitioner bears the burden of proving unpatentability of the
challenged claims, and the burden of persuasion never shifts to Patent
Owner, except in limited circumstances not present here. Dynamic
Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
2015).
A claim is anticipated if a single prior art reference either expressly or
inherently discloses every limitation of the claim. Orion IP, LLC v. Hyundai
Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010). Although the elements must
be arranged or combined in the same way as in the claim, “the reference
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need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not
required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citing In re
Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990)).
A claim is unpatentable under 35 U.S.C. § 103 if the differences
between the claimed subject matter and the prior art are such that the subject
matter as a whole would have been obvious before the effective filing date
of the claimed invention to a person having ordinary skill in the art. 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 non-obviousness,
i.e., so-called secondary considerations such as commercial success, long
felt but unsolved needs, and failure of others.2 Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966). The obviousness inquiry further requires an
analysis of “whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at
418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”)).
Thus, to prevail in an inter partes review, Petitioner must explain
sufficiently how the proposed combinations of prior art would have rendered
the challenged claims unpatentable. We analyze the challenges presented in
the Petition in accordance with the above-stated principles.

2 Neither party has argued that secondary considerations or objective
evidence of nonobviousness exists. Thus, we do not address secondary
considerations or objective evidence of nonobviousness.
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B. Claim Construction
Because the Petition was filed after November 13, 2018, we construe
the challenged claims using the same claim construction standard that would
be used to construe the claims in a civil action under 35 U.S.C. § 282(b).
37 C.F.R. § 42.100(b) (2020).3 This rule adopts the same claim construction
standard used by Article III federal courts, which follow Phillips v. AWH
Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Under
this standard, the words of a claim are generally given their “ordinary and
customary meaning,” which is the meaning the term would have to a person
of ordinary skill at the time of the invention, in the context of the entire
patent, including the specification. See Phillips, 415 F.3d at 1312–13.
Independent claim 1 recites “wherein the lens assembly has an
effective focal length (EFL).” Ex. 1001, 8:24–25. Petitioner contends that
the term “effective focal length” should be construed as “the focal length of
a lens assembly.” Pet. 7. This construction coincides with the construction
of the same term in the ’1140IPR (Paper 10, 10), the ’1146IPR (Paper 8, 7–
8), and ’0030IPR (Paper 32, 8). The ’897 specification supports this
construction because it is the essentially the same as the specification on
which the ’1140IPR based the construction of EFL.
Independent claim 1 also recites “wherein the lens assembly has a
total track length (TTL) of 6.5 millimeters or less.” Ex. 1001, 8:25–26.
Petitioner contends that the ’897 patent discloses that TTL is the “the length
of the optical axis spacing between the object-side surface of the first lens
element and one of: an electronic sensor, a film sensor, and an image plane

3 See Changes to the Claim Construction Standard for Interpreting Claims in
Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed.
Reg. 51,340 (Oct. 11, 2018) (final rule).
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corresponding to either the electronic sensor or [the] film sensor.” Pet. 8.
This construction coincides with the construction of the same term in the
’1140IPR (Paper 10, 10–11), the ’1146IPR (Paper 8, 8), and ’0030IPR
(Paper 32, 14–15). The ’897 specification supports this construction
because it is the essentially the same as the specification on which the
’1140IPR based the construction of TTL.
Patent Owner argues that no “dispute between the parties in
this IPR depends on the construction of EFL, TTL, or of any other claim
term [and] submits that the Board should refrain from construing any terms
in the patent for the purposes of this proceeding.” PO Resp. 17. Petitioner
does not respond to this argument. See generally Pet. Reply. We agree with
Patent Owner. If we were to adopt either construction, it would not change
the determination made in this Decision.
Thus, we decline to construe any claim terms for purposes of this
Final Written Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc.
v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need
only construe terms ‘that are in controversy, and only to the extent necessary
to resolve the controversy.’”).
C. Level of Ordinary Skill in the Art
The level of skill in the art is a factual determination that provides a
primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v.
VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383
U.S. at 17–18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir.
1991)).
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Petitioner argues that one of ordinary skill in the art at the time of the
invention of the ’897 patent
would include someone who had, at the priority date of the ’897
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,
adjusting, and optimizing multi-lens systems for manufacturing,
and would have been familiar with the specifications of lens
systems and their fabrication. In addition, a POSITA [person of
ordinary skill in the art] would have known how to use lens
design software such as Code V, Oslo, or Zemax, and would have
taken a lens design course.

Pet. 6–7 (citing Ex. 1003 ¶¶ 19–20). Patent Owner applied the same level of
skill for the purposes of this IPR. PO Resp. 14–15 (citing Ex. 2001 ¶ 19).
We regard Petitioner’s formulation of the level of skill as consistent
with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).
Therefore, for purposes of this Final Written Decision, we adopt Petitioner’s
assessment of the level of skill in the art because it is consistent with the
’897 patent and the asserted prior art, and we apply it in our analysis below.
D. Overview of the Asserted Prior Art
1. Ogino (Ex. 1005)
Ogino concerns an imaging lens. Ex. 1005, code (54). Figure 5 of
Ogino is reproduced below.
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Figure 5 is a lens cross-sectional view illustrating a configuration
example of an imaging lens of Ogino
Id. at Fig. 5, 4:5–9. Figure 5, above, shows and embodiment of Ogino
including, in order from an object side, five lenses: a first lens L1 that has a
positive refractive power and 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 at least one inflection
point on an image side surface. Id. at 2:4–12.
2. Bareau (Ex. 1012)
Bareau concerns “the design and manufacturing of consumer and
commercial imaging systems using lens elements” that have millimeter-scale
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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.
3. Kingslake (Ex. 1013)
Kingslake is titled “Optics in Photography.” Ex. 1013, Cover. In
Chapter 11, titled “The Brightness of Images,” Kingslake indicates that
“[t]he relation between the aperture of a lens and the brightness of the image
produced by it . . . is often misunderstood, yet it is of the greatest importance
to the photographer who wishes to make the best use of the equipment.” Id.
at 104. Kingslake then states that “[t]he tremendous efforts of lens designers
and manufacturers that have been devoted to the production of lenses of
extremely high relative aperture are an indication of the need that exists for
brighter images and ‘faster’ lenses.” Id.
4. Chen (Ex. 1020)
Chen is directed to “an optical imaging lens set of five lens elements
for use in mobile phones, in cameras, in tablet personal computers, or in
personal digital assistants (PDA).” Ex. 1020, 1:16–19. Chen’s Example 1 is
reproduced below:
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Figure 6 illustrates an example [Example 1] of the optical imaging lens set
Figure 6, above, shows an “optical imaging lens set 1 of the first
example has five lens elements 10 to 50 with refractive power. The optical
imaging lens set 1 also has a filter 70, an aperture stop 80, and an image
plane 71.” Id. at 8:55–58. The prescription table describing Example 1
providing the thickness and spacing of each element along the optical axis
and the focal length of each lens is provided in Figure 24, reproduced below:
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Figure 24 shows the optical data of the first example of Chen’s optical lens
set
Figure 24, above, is a table listing the Curvature radius, Aperture Stop
Distance Lens Thickness Air Gap, Refractive Index, Abbe Number, and
Focal length for the following objects: Aperture Stop, First through Fifth
Lens, IR Filter, and Image Plane. According to Chen, Example 1 has a focal
length (f) of 6.582 mm, a total track length (TTL) of 6.0187 mm, and an f-
number of 2.6614. See id. at 10:9–11, Fig. 42 (col. 1). Chen also provides
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the sag equation and aspheric coefficients for Example 1. Id., 9:49–67, Fig.
41.
5. Iwasaki (Ex. 1009)
Iwasaki discloses “a fixed focus imaging lens for forming optical
images of subjects” that is designed for use in portable devices such as “a
digital still camera, a cellular telephone with a built in camera, a PDA
(Personal Digital Assistant), a smart phone, a tablet type terminal, and a
portable gaming device.” Ex. 1009, 1:18–26. Iwasaki’s lens system is
designed to meet a “demand for miniaturization of the entirety of the
photography devices as well as imaging lenses to be mounted thereon” and
to meet a “demand for high resolution and high performance of imaging
lenses.” Id. at 1:36–41.
Examples 1 and 2 of Iwasaki maintain this ratio by using a thinner
cover glass element of 0.145 mm rather than using 0.210 mm or 0.300 mm
thick cover glass used in Examples 3 and 4. See id. at Tables 1, 3, 5, 7.
6. Beich (Ex. 1007)
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. 1007, 2. Beich discloses design
considerations, or “[r]ules 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.
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E. Asserted Anticipation of Claims 1, 4, 9–15, 17, 20, and 25–29 by Ogino
Petitioner contends that claims 1, 4, 9–15, 17, 20, and 25–29 are
unpatentable under 35 U.S.C. § 102 as anticipated by Ogino. Pet. 10–40.
Patent Owner does not present arguments related to this ground. See
generally PO Resp. For the reasons that follow, we are persuaded that the
evidence supports Petitioner’s arguments and thus, Petitioner establishes by
a preponderance of the evidence that claims 1, 4, 9–15, 17, 20, and 25–29
are unpatentable under 35 U.S.C. § 102 as anticipated by Ogino.
1. Independent Claim 1
“A lens assembly, comprising: a plurality of lens elements
arranged along an optical axis and spaced apart by respective
spaces”
Petitioner contends that Ogino discloses this limitation in Ogino’s
Example 5, shown in Figure 5 reproduced above, which includes lenses L1
to L5 arranged along optical axis Z1, in order from an object side. Pet. 14–
15 (citing Ex. 1005, Fig. 5, 5:13–15). Based on the complete record,
Petitioner has demonstrated sufficiently that Ogino teaches this limitation,
which Patent Owner does not dispute.
“wherein the lens assembly has an effective focal length
(EFL)”
Petitioner contends that Ogino teaches for each of its embodiments,
that “f is a focal length of a whole system.” Pet. 15. (quoting Ex. 1005,
3:16) (citing Ex. 1003, 29). In Table 9, Ogino discloses that the focal length
f of the entire lens system of Example 5 is provided in Table 9 as f = 5.956
mm. Id. (quoting Ex. 1005, Table 9) (citing Ex. 1005, 14:47–53). Table 9
of Ogino is reproduced below.
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Figure 24 shows the optical data of the first example of Ogino’s optical lens
set

Id. at 21:10–35. Table 9 of Ogino discloses optical parameters for the lens
assembly of Example 5, which is depicted in Figure 5. Based on the
complete record, Petitioner has demonstrated sufficiently that Ogino teaches
this limitation, which Patent Owner does not dispute.
“a total track length (TTL) of 6.5 millimeters or less and a ratio
TTL/EFL of less than 1.0”
Petitioner contends that a person of ordinary skill in the art “would
have identified the total track length of Example 5 lens apparatus to be the
distance between the object-side surface of the first lens L1 and the image
plane 100 (R14).” Pet. 16–17 (citing Ex. 1005, Fig. 5; Ex. 1003, 30).
As noted by Petitioner, Ogino explicitly discloses that “the TTL with
the cover glass element can be calculated by summing the widths above
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labeled D1 to D13” which results in a TTL of 5.273, using the values
depicted in Table 9 of Ogino. Ex. 1005, Table 9; see Pet. 17–18 (citing in
part Ex. 1003, 30–31). Ogino discloses an EFL of 5.956 as depicted in
Table 9. Ex. 1005, Table 9; see Pet. 17–19 (citing in part Ex. 1003, 30–32).
With Ogino disclosing a TTL of 5.273 and an EFL of 5.956, Ogino
also discloses a ratio of TTL/EFL of 0.8853, which is less than 1.0. See Pet.
18–19. Based on the complete record, Petitioner has demonstrated
sufficiently that Ogino teaches this limitation, which Patent Owner does not
dispute.
“wherein the plurality of lens elements includes, in order from an object
side to an image side, a first group comprising lens elements L1_1, L1_2 and
L1_3 with respective focal lengths f1_1, f1_2 and f1_3 and a second group
comprising lens elements L2_1 and L2_2,”

According to Petitioner, Figure 13 of Ogino depicts “Example 5 lens
assembly includes a first lens group with three lens elements L1-L3 in order
(i.e., L1_1, L1_2, and L1_3) and a second lens group with two lens elements L4-
L5 in order (i.e., L2_1 and L2_2).” Pet. 19–20 (citing Ex. 1003, 33; Ex. 1005,
Figs. 5, 13). Petitioner calculates the focal lengths of L1_1, L1_2, and L1_3
respectively as 2.068, -3.168, -6.926. Id. at 20–21 (citing Ex. 1005, 15:44–
48). Based on the complete record, Petitioner has demonstrated sufficiently
that Ogino teaches this limitation, which Patent Owner does not dispute.
“wherein the first and second groups of lens elements are
separated by a gap that is larger than twice any other gap
between lens elements”
Petitioner asserts Figure 5 shows the “gap between the other lens
elements are identified as D2+D3 (between L1 and L2), D5 (between L2 and
L3), and D9 (between L4 and L5) [and t]he widths of each gap D2+D3 (with
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the aperture stop in the middle, which is not a lens element), D5, D7, and D9
are provided in Table 9.” Pet. 22–24 (Ex. 1005, Fig. 5, Table 11).
Petitioner further presents, based on this data, calculations that show
Ogino’s D7 is more than twice as large than the other gaps between lens
elements, i.e. D7 (0.506) is more than two times the length of the gaps D2,
D3 (0.099), D5 (0.243), and D9 (0.100). Id. Based on the complete record,
Petitioner has demonstrated sufficiently that Ogino teaches this limitation,
which Patent Owner does not dispute.
“wherein lens element L1_1 has positive refractive power and lens element
L1_2 has negative refractive power”

Petitioner contends Ogino discloses this limitation because the optical
data for the Example 5 lens assembly shows that the L1 lens element (i.e.,
L1_1) has positive refractive power and the L2 lens element (i.e., L1_2) has
negative refractive power. Pet. 24 (citing Ex. 1003, 37).
Petitioner asserts
[a person of ordinary skill at the time of the invention] would
have recognized that the refractive power of a lens is equal to the
inverse of the focal length of the lens: ‘[t]he practical unit of
power is a dioptre; it is the reciprocal of the focal length, when
the focal length is expressed in meters.’

Pet. 24 (quoting Ex. 1010, 159) (alteration in original). Thus, as established
above, the L1 lens has a positive focal length of 2.068 mm thereby
indicating a positive refractive power and the L2 lens has a negative focal
length of -3.168 mm thereby indicating a negative refractive power. Id.
(citing Ex. 1003, 37). Based on the complete record, Petitioner has
demonstrated sufficiently that Ogino teaches this limitation, which Patent
Owner does not dispute.
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“and wherein lens elements L2_1 and L2_2 have opposite refractive powers”

Petitioner asserts
while not given in Ogino, the focal length f4 of the L4 lens can
be calculated by inputting the optical data for the lens into the
commonly known ‘lens maker’s equation’ for lenses separated
by a gap, as stated in Born

where f is the focal length of the lens, n is the index of refraction,
r1 and r2 are the curvature of the lens’s two surfaces, and t is the
axial thickness of the lens.

Pet. 25.
Petitioner further presents, based on the data in Table 9, calculations
that show the L4 lens has a focal length f4 = 2.7359 mm and the L5 lens has
a focal length f5 = -2.451 mm. Id. at 25–27 (citing Ex. 1005, Table 9, 13;
Ex. 1003, 40). Thus, because L4 is positive and L5 is negative, they have
opposite refractive powers. Id. Based on the complete record, Petitioner has
demonstrated sufficiently that Ogino teaches this limitation, which Patent
Owner does not dispute.
Conclusion
Based on the complete record, and for the reasons explained by
Petitioner, we are persuaded that Petitioner has shown by a preponderance of
the evidence that Ogino discloses the limitations of claim 1.
2. Dependent Claims 4, 9–15, 17, 20, 25–29
Patent Owner does not raise arguments for claims 4, 9–15, 17, 20, and
25–29. We have reviewed Petitioner’s arguments and evidence concerning
claims 1, 4, 9–15, 17, 20, 25–29, and we adopt them as our own. Pet. 28–
40. Thus, based on the complete record, and for the reasons explained by
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Petitioner, we are persuaded that Petitioner has also shown by a
preponderance of the evidence that these claims are anticipated by Ogino.
See id.
F. Asserted Obviousness of Claims 2, 5, 6, 18, and 21–23 over Ogino in
view of Bareau
Petitioner asserts that the combination of Ogino and Bareau teaches or
suggest all the limitations of claims 2, 5, 6, 18, and 21–23, and provides
reasoning as to why one of ordinary skill in the art would have been
prompted to combine the teachings of these references. Pet. 40–51. For the
reasons that follow, we determine that Petitioner has shown persuasively that
the combination of Ogino and Bareau would have rendered claims 2, 5, 6,
18, and 21–23 of the ’897 patent obvious.
1. Analysis of Motivation to Combine Ogino and Bareau and the
Limitation of “a f-number F#<2.9” and/or “a f-number F#=2.8”
Petitioner’s analysis, as supported by the Sasián Declaration,
demonstrates where Petitioner contends each element in claims 2, 5, 6, 18,
and 21–23 is disclosed in Ogino and Bareau. Pet. 40–51. In particular,
Petitioner relies on its anticipation contentions regarding Ogino, discussed
above, and adds Bareau to teach the limitation of an f-number less than 2.9,
recited in claim 2, and an f-number equal to 2.8, recited in claim 23. Id.
at 41–49, 51. Our discussion above addresses Petitioner’s contentions as to
Ogino. See supra Section III.E. Accordingly, our discussion here focuses
on whether the combination of Ogino and Bareau accounts for the
limitations of an f-number less than 2.9 and/or an f-number equal to 2.8.
As to the motivation to combine Ogino and Bareau, Petitioner states
A POSITA would have found it obvious to modify
Ogino’s Example 5 lens assembly in view of Bareau’s
specifications for cell phone camera lenses with an F#=2.8 or less
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for ¼” and smaller image sensors. Such a combination would
have been simpl[ly] . . . applying Bareau’s specification for a
brighter lens system for smaller image sensors, according to
known lens design and modification methods (as taught in
[Fischer (Ex. 1017)]), to yield a predictable result of Ogino’s
Example 5 lens assembly likewise supporting an f-number of 2.8
or lower for a small sensor format.

Id. at 41–42 (citing Ex. 1003 ¶ 51; Ex. 1017, 172; Ex. 1024, 1:23–53; Ex.
1012, 3–4). Petitioner relies on Bareau to show that: cell phones having
cameras with f-number 2.8 for one quarter inch and smaller sensors were
common in 2006; the desire to achieve lower f-numbers was well known
because of the need for faster lenses; and “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.” Id. at 42 (citing Ex. 1003 ¶ 52; Ex. 1012, 3; Ex. 1013, 104).
Petitioner asserts Ogino has examples with an f-number “down to 2.45” and
thus “modifying Ogino’s Example 5 to have an f-number of 2.8, as taught in
Bareau, would have been nothing more than applying Bareau’s specification
of an F#=2.8 for a ¼” image sensor format according to known lens design
methods (as taught in Fischer [Ex. 1017]) to allow Example 5 to likewise
better support a ¼” sensor format in a thin cell phone.” Id. at 43 (citing Ex.
1003 ¶ 53).
Petitioner acknowledges that Bareau has a field of view (FOV) of 60
degrees, associated with a wide lens rather than a telephoto lens, but
contends that “that Bareau’s specifications for 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 regardless of a lens’s
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focal length or FOV.” Id. (citing Ex. 1003 ¶ 54; Ex. 1005, Figs. 14, 15; Ex.
1012, 3–4; Ex. 1014, Fig. 16, Ex. 1015). Thus, according to Petitioner a
person of ordinary skill in the art seeking to create a telephoto lens with a
low f-number would have looked to modify Ogino’s Example 5. Id. (citing
Ex. 1003 ¶ 54).
Petitioner, supported by Dr. Sasián, contends one way to modify
Example 5 to lower the f-number would be to increase the diameter of one
or more lens element surfaces such as the first lens in Example 5 which is
the entrance aperture 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.”
Id. at 44 (citing Ex. 1003 ¶ 55, Ex. 1016, 59).
According to Petitioner, the lens design arrived at by Dr. Sasián has
the following specifications: “EFL=5.648 mm, TTL=5.271 mm, and radii of
curvature, spacing, and focal lengths of lens elements L2, L3, L4, and L5 are
unchanged and the focal length of L1 is f1=2.0711 similar to f1
unmodified.” Id. at 45 (citing Ex. 1003 ¶ 56). Petitioner presents Zemax
data sheets supporting its contention that its proposed design has “the same
structural design (i.e., focal lengths and spacing) and similar performance
characteristics when compared to the original Example 5 design.” Id. (citing
Ex. 1003 ¶ 57). Additionally, according to Petitioner, “Example 5 modified
for F#=2.8 continues to meet all of the limitations of claim 1 since f1-f5,
EFL, TTL, and thicknesses and spacing all still satisfy the respective
conditional expressions” of independent claim 1. Id. at 46–47 (citing Ex.
1003 ¶ 58). Finally, Petitioner asserts that the declarant for Patent Owner in
two related IPRs, IPR2018-01140 and -1146, testified that a person of
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ordinary skill in the art would know how to lower the f-number. Id. at 47
(citing Ex. 1023, 119:4–22, 121:5–122:13).4
Analysis of Patent Owner’s Arguments
Patent Owner argues that
[i]f a POSITA looking at Ogino felt that an f-number of 3.94 was
not suitable for their particular application and wanted an f-
number of 2.8 instead, that person would naturally look to one of
Ogino’s other designs, with f-number closer to 2.8, or to one of
the hundreds of other miniature lens designs available in the
patent literature or in the market. Dr. Sasian provides no
explanation for why a POSITA would pick Ogino Example 5,
the Ogino lens that is farthest from this desired f-number and
modify it dramatically as Dr. Sasian proposes.

PO Resp. 31 (citing Ex. 2001 ¶ 81). This argument does not undermine
Petitioner’s showing. As explained above, Petitioner cites to Bareau as
suggesting lowering the f-number to 2.8. Pet. 41–42. That is, Petitioner has
shown an artisan seeking to improve upon or otherwise modify Ogino would
have tried to lower the f-number because of the known advantages provided
by such a lower f-number. See id.
As to the motivation to choose Example 5 versus the other examples
in Ogino, the Federal Circuit has found that a person of ordinary skill is not
limited to pursuing only the one best option. 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.”); In re Fulton,
391 F.3d 1195, 1200 (Fed. Cir. 2004) (holding that “a particular

4 For example, when asked “[would] a person of ordinary skill in the art be
able to reduce an f-number to under 2.9,” Dr. Moore testified “Yes.” Ex.
1023, 119:19–22.
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combination” need not “be the preferred, or the most desirable, combination
described in the prior art in order to provide motivation”). Additionally, in
response to Patent Owner’s argument, Petitioner, in its Reply, contends that
Dr. Milster’s claim that there were “hundreds” of miniature lens designs did
not limit that estimate to telephoto lenses. Pet. Reply 3 (citing Ex. 1025,
78:12–17,5 Ex. 1037 ¶ 4 (Saisán reply declaration)).
Petitioner also responds, in its Reply, that a person of ordinary skill in
the art would have chosen Example 5 because
Example 5 offers the best telephoto ratio of the Ogino’s examples
(0.868) which, when considered alone, would have motivated a
POSITA to consider it ripe for improvement given its less
desirable features, like a higher F-number relative to Ogino’s
other examples. See id., 16:29-22:35 (Tables 1-11). The low
telephoto ratio of Example 5 would also have given a POSITA
more flexibility to experiment with the lens design while still
maintaining its telephoto character. APPL-1037, ¶ 6.
Id. at 4. To the extent that Petitioner is required to show that a person
of ordinary skill in the art would have chosen Example 5 over the
other examples in Ogino, we are persuaded that Petitioner has shown
this by Petitioner’s contention that Example 5 offers the best telephoto
ratio above.6
Patent Owner also argues “Dr. Sasián’s modification to Ogino
Example 5 does not satisfy all of the ‘typical lens specifications’ from

5 There a appears to be a typographical error and Ex. 1028, 159:25–160:15
(Milster Dep.) appears to be the correct citation.
6 Petitioner also asserts “The relevance of Ogino to the lenses of the ’897
patent is also evidenced by not only their similarities in track length and
optical characteristics, but also the fact that Ogino’s Example 5 anticipates
most of the claims of the ’897 patent, which Patent Owner does not dispute.”
We do not rely on this assertion.
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Bareau” because it reduces the full field of view of 40°. PO Resp. 31 (citing
Ex. 2001 ¶ 82). Patent Owner asserts that Petitioner needs to explain why
the combination “move[s] [] further away” from a specification of Bareau.
Id. at 31–32. Thus, according to Patent Owner, “nothing cited by Dr. Sasián
suggests that an f-number of 2.8 was desirable in the context of a narrower-
angle lens.” Id. We find Petitioner’s contentions that the f-number indicates
how much light reaches the image sensor regardless of a lens’s focal length
or FOV (Pet. 43) persuasive, and we find that Patent Owner has not
presented sufficient rebuttal why the selection of f-number would be
different in narrower-angle lenses; thus, this conclusory argument does not
undermine Petitioner’s showing. PO Resp. 31; See generally Sur-Reply
(Patent Owner does not address the field of view of Ogino).
Patent Owner also argues Petitioner has not shown that a person of
ordinary skill in the art would have followed Dr. Sasián’s approach and
made the modification he made. PO Resp. 32–34. Specifically, Patent
Owner argues that
[i]n modifying Ogino Example 5, Dr. Sasian kept the number of
lens elements, the powers of the lens elements, their thicknesses,
and their spacings unchanged, except for a small change to the
thickness of the first lens element. (Ex. 1003, Sasian Decl. at 104;
Ex. 2001, Milster Decl., ¶ 84.) He made the small change in
thickness of the first lens element, from 0.546 mm (Ex. 1005,
Ogino Table 9) to 0.600 mm (Ex. 1003, Sasian Decl. at 107) by
hand. (Ex. 2003, Sasian Depo. at 24:14–25:10.) By keeping these
parameters (nearly) unchanged, Dr. Sasian ensured that the
values of EFL, TTL, lens powers, and lens gaps needed to satisfy
other claim elements remained unchanged. (Ex. 2001, Milster
Decl., ¶ 84.)

Id. at 32–33. Patent Owner argues that this approach was guided by
hindsight rather than the knowledge and motivation of one of ordinary skill
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in the art at the time of the invention. Id. at 33. Patent Owner points to
“vast number of ways” the lens parameters could be varied including 20
different approaches suggested in Dr. Sasián’s own design textbook on the
subject. Id. at 33–34. Patent Owner also suggests a person of ordinary skill
would have started with Ogino’s Example 6 which has an f-number of 2.64
and a field of view of 59.6° which are more in line with Bareau. Id. at 34.
Petitioner argues the approach of making small changes is “precisely”
the approach one of ordinary skill would have taken. Pet. Reply 6–7.
Petitioner relies on Fischer (Ex. 1017), Kinglake (Ex. 1013) and the opening
and reply testimony of Dr. Sasián to support this contention. Pet. Reply 6–7
(citing Ex. 1003, 55, 104; Ex. 1013; Ex. 1017, 168; Ex. 1037 ¶ 11; Ex. 1028,
21:6–18; Ex. 1023, 99:6–18). We credit the testimony of Dr. Sasián on this
point. Additionally, Petitioner contends, as discussed above, that “the f-
number indicates how much light reaches the image sensor regardless of a
lens’s focal length or FOV.” Pet. 43 (citing Ex. 1003 ¶ 54; Ex. 1005, Figs.
14, 15; Ex. 1012, 3–4; Ex. 1014, Fig. 16; Ex. 1015). Patent Owner does not
respond to this argument in its Sur-Reply. See generally Sur-Reply (Patent
Owner does not address this field of view argument).7 We find that
Petitioner has the better position. Petitioner has persuasively explained why
one of ordinary skill in the art guided by Bareau would have looked to

7 Patent Owner’s counsel at the hearing asserts that “[t]he F number, the
field of view, and the telephoto ratio all depend on the focal length of the
lens.” Tr. 36. Patent Owner’s counsel also argues “because the
longer focal length of the narrow-angle lens requires a larger
lens element, a larger aperture in order to support the small
F number.” Id. at 362–37. However, these arguments by counsel were not
briefed by Patent Owner and are not supported by expert testimony.
Therefore, we do not rely on this unsupported attorney argument.
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Ogino in order to reduce the f-number below 2.9 and begin with Example 5,
then reduce the f-number with a minimum of other changes to the design.
Despite the discussion above, we clarify that we do agree with Patent
Owner that a person of ordinary skill in the art would have known that the
lenses in Ogino would most likely be made of injection molded plastic. PO
Resp. 34–37 (citing Ex. 2001 ¶ 91). We agree with Patent Owner that a
person of ordinary skill in the art at the time of the invention would have
considered issues of manufacturability in determining the edge thickness and
consider oversizing the edges of the lens to deal with this potential problem.
Id. at 37–46. Finally, we agree a person of ordinary skill in the art at the
time of the invention would also have recognized that when designing lens
elements for crafting via injection molding, a number of manufacturing
realities apply that all promote maximizing the thickness of the lens element
at the edge. In particular, the Handbook of Optics (Ex. 1019) states that
“Surface-tension effects may play a significant role in the accuracy to which
a precision optical surface may be molded. Particularly in areas of the part
where the ratio of surface area/volume is locally high (corners, edges) . . . .”
PO Resp. 46. Nevertheless, we disagree with Patent Owner regarding the
import of one of ordinary skill being aware of manufacturability concerns.
Based on the alleged knowledge of one of ordinary skill discussed
above, Patent Owner argues that one of ordinary skill would have believed
the edges of the first lens element of Petitioner’s proposed lens design would
be too thin to be manufacturable. Id. at 34. Specifically, Patent Owner,
through its declarant Dr. Milster, shows that in order to achieve that f-
number in Petitioner’s proposed lens design the first lens element would
need to be the shape shown below in a drawing reproduced from Dr.
Milster’s declaration.
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In the drawing, reproduced above from Dr. Milster’s declaration,
representing Dr. Sasián’s proposed lens design with an f-number of 2.8,
there is a rounded lens surface with blue rays entering from the right and
being bent inward as the pass through the lens – the blue rays of this drawing
are the rays of the bundle that defines the entrance pupil. Id. at 38–39 (citing
Ex. 2001 ¶ 96). Based on Dr. Milster’s calculations, Patent Owner argues
“[t]he resulting shape has a very narrow edge and a large slope at that edge.
According to Dr. Milster’s calculations, the edge thickness is only 0.0394
mm (or 39.4 microns), and the slope is 58.86°.” PO Resp. 40 (citing Ex.
2001 ¶ 98, Appx. § XI.A).
Patent Owner also argues that not only does Dr. Sasián’s proposed
lens design have thin edges but a commercial lens would be oversized at the
edges to accommodate mounting. Id. at 41–48. Patent Owner also presents
X-Ray CT images of a commercial lens showing that the curved potions of
the lens are oversized creating flanges at the edge to accommodate the
mounting of the lenses. Id. at 41–43. Patent Owner argues that oversizing is
necessary because a lens cannot be made with perfectly sharp corners and
edges. Id. at 43 (citing Ex. 2001 ¶ 103). According to Patent Owner, “[i]n
molded lenses, one reason for this is surface tension of the lens material. If
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one attempted to inject plastic or glass into a mold with sharp corners such
as shown in the Zemax drawing, the liquid would not fill the corners, but
would rather form a rounded surface, which would bend light differently
than the ideal shape in Zemax.” Id. Thus, according to Patent Owner, “[a]
practical lens design would use an edge shape that permitted oversizing and
rounded corners.” Id. at 46 (citing Ex. 1019, 34.16; Ex. 2001 ¶ 108).
Petitioner points out that claims 2, 5, 6, 18, and 21–23 do not include
any manufacturing requirements such as center-to-edge thickness ratio. Pet.
Reply 9. Petitioner also points out that “the inclusion of the center-to-edge
thickness ratio in claims 16 and 30 and not in any other claims makes it clear
that they are additional limitations not required of the other claims of the
’897 patent under the doctrine of claim differentiation.” Id. at 10 (citing SRI
Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1122 (Fed. Cir. 1985) (“It is
settled law that when a patent claim does 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 also contends that Example 1 of the ’897 patent would not
meet the manufacturability requirements suggested by Dr. Milster. Id. at
17–18 (citing Ex. 1037 ¶ 22; Ex. 1028, 98:24–99:4 (Dr. Milster testified he
did not determine whether the lenses in the ’897 Specification were
manufacturable)); EPOS Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338,
1347 (Fed. Cir. 2014) (“[A] claim construction that excludes a preferred
embodiment . . . is rarely, if ever correct and would require highly
persuasive evidentiary support.” (alteration in original)).
We agree that claims 2, 5, 6, 18, and 21–23 do not include any
manufacturing requirements such as center-to-edge thickness ratio; therefore
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we decline to read a limitation of a manufacturability and/or edge thickness
limitation into the claims that do not recite such a requirement.
As to motivation to combine, it is unclear upon which one of the
following Patent Owner’s argument regarding manufacturability is based:
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 that a
person of ordinary skill in the art simply would not have been motivated to
pursue designs that do not meet Beich’s rules of thumb for
manufacturability. See Tr. 55–56. Below, we address each of these possible
bases for Patent Owner’s arguments.
“The reasonable expectation of success requirement refers to the
likelihood of success in combining references to meet the limitations of
the claimed invention.” See Intelligent Bio-Systems, Inc. v. Illumina
Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016) (“[F]ailure to
consider the appropriate scope of the . . . patent’s claimed invention in
evaluating the reasonable expectation of success . . . constitutes a legal
error”) (emphasis omitted, alteration in original). Because manufacturability
concerns regarding edge thickness are not claimed, a person of ordinary skill
can have success in making the lens design claimed in claims 2, 5, 6, 18, and
21–23 without regard to manufacturability. Thus, Patent Owner’s argument
does not undermine Petitioner’s showing of reasonable expectation of
success.
As to inoperability for its intended purpose, “[i]f references taken in
combination would produce a ‘seemingly inoperative device,’ . . . such
references teach away from the combination and thus cannot serve as
predicates for a prima facie case of obviousness.” McGinley v. Franklin
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Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001). However, a modification
to a prior art reference that results in the loss of key functionality can be
overcome by evidence that a person of ordinary skill would nevertheless
have been motivated to combine references. In re Urbanski, 809 F.3d 1237,
1244 (Fed. Cir. 2016). Here, Petitioner presents evidence, including
testimony by its declarant, that a person of ordinary skill in the art would
have been motivated to make lenses for experimental or research purposes
that to do require manufacturing tolerances for edge thickness. Pet. Reply
13–14 (citing Ex. 1037 ¶¶ 16, 17; Ex. 1028, 173:9–11, 25).8,9
Petitioner also contends a person of ordinary skill in the art “would
have understood these patented lens designs to have usefulness and purpose,
and to be physically producible, even if they do not meet the strict large-
scale manufacturing considerations argued by Patent Owner. Id. at 15
(citing Ex. 1037 ¶ 19). Petitioner contends that Beich suggests that one of
ordinary skill would have balanced the manufacturing difficulty of the
allegedly thin edges of Petitioner’s proposed lens design with the
performance achieved by those lenses. Id. at 16 (citing Ex. 1007, 1, 7, 9; Ex.
1012, 11).
But it is a commonplace fact that design decisions entail making
tradeoffs among multiple objectives. Allied Erecting and Dismantling Co. v.
Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (“A given

8 There appears to be a typographical error and the correct citation appears to
be Ex. 1028, 182:17–20, 182:9.
9 Petitioner also asserts that other patents disclose lenses with similar edge
thickness. Pet. Reply 14 (citing Exs. 1035, 1036). We do not rely on this
evidence.
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course of action often has simultaneous advantages and disadvantages, and
this does not necessarily obviate motivation to combine.”).
Additionally, Petitioner presents an alternative lens design to show
that one of ordinary skill would have been able to create a device that was
operable. Pet. Reply 19–21 (citing Ex. 1037 ¶¶ 24–26). Petitioner’s
proposed design shows that a design with acceptable edge thickness while
still meeting the limitations of claims 2, 5, 6, 18, and 21–23 was within the
knowledge of one of ordinary skill in the art. Id.
Patent Owner argues that this is a new combination that is untimely
and should be disregarded. Sur-Reply 11–12. Specifically, Patent Owner
complains “[i]n creating this new lens, Dr. Sasián manually changed the
thickness of the first lens element and performed steps in Zemax that turned
off vignetting and that caused the location of the image plane to change,
along with the conic constant of the first lens surface and 32 higher-order
aspheric terms describing the lens surfaces,” all of which would be new
purported combinations to which Patent Owner would need to respond. Id.
at 11. We note that none of the changes Patent Owner discusses, other than
the thickness of the first lens, is a limitation of the claims at issue or any
other claims of the ’897 patent, nor is the new combination presented as a
new ground but rather, as stated above, to show that changing the lens
design to meet Patent Owner’s alleged manufacturability concerns was
within the knowledge of one of ordinary skill in the art. Pet. Reply 19–21.
Additionally, as to Patent Owner’s assertion that this argument is an
improper new argument never before presented by Petitioner, we determine
that Petitioner’s additional proposed lens design properly responds to Patent
Owner’s arguments that Petitioner’s modification would have rendered
Ogino unsatisfactory for its intended purpose or would have frustrated
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Petitioner’s asserted motivation to combine. See 37 C.F.R. § 42.23(b) (“A
reply may only respond to arguments raised in the corresponding . . . patent
owner response.”); Idemitsu Kosan Co., Ltd. v. SFC Co. Ltd., 870 F.3d 1376,
1380–81 (Fed. Cir. 2017) (permitting rebuttal argument from a petitioner in
response to a patent owner’s argument that a reference taught away from a
particular combination, as such argument was “simply the by-product of one
party necessarily getting the last word”). Additionally, Patent Owner was
given the opportunity to address this alleged new theory in its Sur-Reply.
Therefore, for the reasons above, Petitioner has shown sufficient
motivation to combine that is not undermined by Patent Owner’s assertions
regarding the lack of manufacturability of Petitioner’s proposed lens design.
That is, Patent Owner’s arguments do not undermine Petitioner’s showing
that the combination of Ogino and Bareau would have taught a person of
ordinary skill in the art to create a lens design with an f-number less than 2.9
and/or an f-number equal to 2.8. Additionally, we find that Petitioner has
made a sufficient showing that one of ordinary skill in the art would have
been motivated to combine Ogino and Bareau in the manner described by
Petitioner with a reasonable expectation of success, and that the motivation
has sufficient rational underpinning. Pet. 41–47. Below we discuss the
remaining limitations of claims 2, 5, 6, 18, and 21–23.
2. Claim 2
“The lens assembly of claim 1, wherein the TTL is equal or
smaller than 6.0 mm and the lens assembly has a f-number
F#<2.9”
Petitioner relies on its contentions as to how Ogino discloses the
limitations of claim 1 discussed above. Pet. 47–48. Petitioner also contends
the combination of Ogino and Bareau discloses this limitation in the
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modification of Ogino’s Example 5 which supports an f-number is 2.8, the
TTL is maintained to 5.271 mm as compared to the original TTL of 5.273
mm. Id. at 48 (citing Ex. 1003, 62). As explained above, Petitioner has
shown sufficiently a motivation to combine Ogino and Bareau so as to
modify Ogino’s Example 5 to support an f-number is 2.8. Based on the
complete record, Petitioner has demonstrated sufficiently that the
combination of Ogino and Bareau teaches the limitations of claim 2, which
Patent Owner does not dispute except as noted above.
3. Claims 5, 18, and 21–23
Claims 5, 18, and 21–23 depend directly or indirectly from claims 2
and/or 17 and further recite substantially the same limitations as dependent
claims 2 and 6. Petitioner refers back to its analysis for claims 1, 2, 6, and 17
(Pet. 49–51), and Patent Owner does not present arguments beyond those
discussed above with respect to claim 2. We have reviewed Petitioner’s
arguments and evidence concerning claims 5, 18, and 21–23 and we adopt
them as our own. Id. at 49–51. Based on the complete record, and for the
reasons explained by Petitioner, we are persuaded that Petitioner has shown
by a preponderance of the evidence that the combination of Ogino and
Bareau teaches or suggests the limitations of claims 5, 18, and 21–23. See
id.
4. Claim 6
“The lens assembly of claim 5, wherein lens element L1_1 has
a concave image-side surface”
Petitioner relies on Ogino’s disclosure of the “L1 lens (i.e., L1_1) in
Example 5 which has a meniscus shape which is convex toward the object
side.” Pet. 50 (Ex. 1005, 13:5–11). Petitioner contends a person of ordinary
skill in the art “would have recognized that the description of L1 being
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meniscus means that the first lens has a convex object-side surface and a
concave image-side surface.” Id. (citing Ex. 1003, 64). Petitioner contends
that this is because meniscus lenses are commonly known to include one
convex side and one concave side. Id. (citing Ex. 1010, Fig. 4.15). Based
on the complete record, Petitioner has demonstrated sufficiently that the
combination of Ogino and Bareau teaches the limitations of claim 6, which
Patent Owner does not dispute.
G. Asserted Obviousness of Claims 3, 8, 19, and 24 over Ogino, Bareau,
and Kingslake
Petitioner asserts that the combination of Ogino, Bareau, and
Kingslake teaches or suggests all the limitations of claims 3, 8, 19, 24 and
provides reasoning as to why one of ordinary skill in the art would have
been prompted to combine the teachings of these references. Pet. 51–61.
For the reasons that follow, we determine that Petitioner has not shown
persuasively that the combination of Ogino, Bareau, and Kingslake would
have rendered claims 3, 8, 19, 24 of the ’897 patent obvious.
These claims add two limitations that are not satisfied by the first
modification to Ogino used in the ground based on anticipation by Ogino or
the ground based obviousness only over Ogino and Bareau: an image-side
surface diameter between 2.3 mm and 2.5 mm for the first lens element
(claims 3 and 19) and a convex image-side surface (claims 8 and 24). The
image-side surface diameter of the first lens element in Petitioner’s first
modification of Ogino is 2×0.98943 = 1.97886 mm, outside the range
required by claims 3 and 19. Ex. 2001 ¶ 126. This image-side surface is
also concave, as shown by the positive value of the radius of curvature
(252.97534) in Dr. Sasián’s lens prescription. Ex. 1003, 107; Ex. 2001
¶ 126. Dr. Sasián explains how the meniscus lens convex toward the object
IPR2020-00878
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38
side in each of Ogino’s examples has a concave image-side surface in his
analysis of claim 6. Ex. 1003, 63–66; Ex. 2001 ¶ 128.
Patent Owner asserts “[t]he fact that the first lens element has a
concave image-side surface is a feature of every example in Ogino and is
described by Ogino as a defining feature of its invention.” PO Resp. 56
(citing Ex. 2001 ¶ 126). For example, Ogino explains that its invention uses
a first lens that “has a positive refractive power and has a meniscus shape
which is convex toward the object side.” Ex. 1005, code (57), 13:5–10.
Ogino explains its reason for including this feature:
by making the first lens L1, which is a lens closest to the object,
have a positive refractive power and have a meniscus shape
which is convex toward the object side in the vicinity of the
optical axis, the position of the rear side principal point of the
first lens L1 can be set to be close to the object, and thus it is
possible to appropriately reduce the total length.

PO Resp. 57 (quoting Ex. 1005, 7:31–37) (emphasis omitted). Petitioner
suggests this disclosure would not have discouraged one of ordinary skill
from changing the shape of the lens (Pet. Reply 23), however, Patent Owner
is not arguing teaching away but rather that Petitioner has failed to present
sufficient motivation for the change.
Petitioner also asserts its proposed lens design for this ground changes
“[t]he radius of curvature for the image-side surface of L1 [] from concave
to convex to allow the L1 lens to better focus incoming light, to provide a
thicker edge for easier manufacturing (see [Ex. 1007, 7]) while maintaining
its original focal length as much as possible.” Pet. 60 (citing Ex. 1003, 74–
75); Pet. Reply 23. In explaining his method for modifying the lens, Dr.
Sasián testifies he “Re-optimize[d the] lens with only lens L1 radii (due to
location of the aperture), airspaces, and aspheric coefficients.” Ex. 1003,
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39
Appx., 108, Fig. 3D. Petitioner does not explain sufficiently its rationale for
modifying Ogino to change the shape of the lens.
Petitioner’s cursory reference to better focusing incoming light,
providing a thicker edge, or location of the aperture is not sufficient to
change the shape of a lens.10 Petitioner needed to explain sufficiently why
the change in shape was required to achieve these benefits as opposed to
other possible changes. In its Reply, Petitioner repeats these cursory
statements with a slight variation (a “POSITA would have been motivated to
change the shape of Ogino’s Example 5 first lens to increase the lens
diameter to allow more light to pass through the system while maintaining a
focal length similar to the original Ogino Example 5 lens assembly”). Pet.
Reply 23–24. However, Petitioner still does not explain sufficiently why
changing the shape of the lens would have been the method chosen by one
of ordinary skill in the art to allow more light in or focus more light.
Additionally, Petitioner does not explain sufficiently how the location of the
aperture informed this choice.
Petitioner also argues that “the steps Dr. Sasián used to produce the
second modified Example 5 lens design . . . are gradual and within the level
of a skill of a POSITA.” Pet. Reply 24. To the extent that Petitioner wishes
to fill a missing limitation with the general knowledge of one of ordinary
skill, “the use of common sense [requires] a reasoned explanation that
avoids conclusory generalizations.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d

10 Petitioner asserts that in IPR2018-01140 we accepted Dr. Sasián’s
modification of Ogino’s Example 6 lens assembly with the second lens
changed from meniscus to biconcave. Pet. Reply 22 (citing Ex. 1032, 44).
However, in that case Dr. Sasián relied on a prior art reference and explained
the motivation to make the modification. Ex. 1032, 39. He does not do so
here.
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1355, 1366 (Fed. Cir. 2016). Petitioner’s conclusory reference to changes
being “gradual” or within the level of skill do not explain sufficiently what
about Dr. Sasián’s process indicates that one of ordinary skill would be able
to take the steps that he did.
Petitioner also asserts, “a POSITA would have been motivated to
experiment . . . to see if a smaller f-number would also have been attainable
for Example 5. [Ex. 1003], pp.68-69. A natural target for further reduction
would have been f=2.45, which is the lowest F-number offered in Ogino’s
examples. Id., p.69.” Pet. Reply 24 (emphasis added); see also id. at 27–28
(“f=2.45 being a natural design goal as provided in Ogino’s other
embodiment” (emphasis added)). Again, Petitioner does not explain
sufficiently why using an f-number of 2.45 would require changing the
shape of the first lens. 11

11 At the Oral Hearing, Petitioner tried to explain that Dr. Sasián simply ran
an optimization and the computer chose to change the shape of the lens.
Specifically, Petitioner’s counsel argued that
when Dr. Sasián says that he was starting with Ogino Example 5
at F equals 2.8, he opened the aperture and then he re-optimized
the lens only using the L1 radii. So he used the radius -- the radii
values on both sides of the first lens and then he allowed the
software to optimize it and what that did is that created the
convex surface on the image side. The convex surface on the
image side is a natural result that the software derived of
applying this particular change to this embodiment.
So because it’s a natural result of it there’s nothing wrong
and there’s no motivation that needs to be provided specifically
for this change. Again, when the change is a natural result of the
modification there’s no specific argument that needs to be
provided -- or reason or motivation that needs to be provided to
make that specific change because it's the result of applying the
modifications that Dr. Sasián did.

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Additionally, at the hearing Petitioner suggested that its reference to
“natural” was an inherency argument by citing to PAR Pharmaceuticals v.
TWI Pharmaceuticals, 773 F.3d at 1195–96. Tr. 53. PAR states that “[a]
party must[] meet a high standard in order to rely on inherency to establish
the existence of a claim limitation in the prior art in an obviousness
analysis—the limitation at issue necessarily must be present, or the natural
result of the combination of elements explicitly disclosed by the prior art.”
PAR Pharms., 773 F.3d at 1195–96. We do not determine that Petitioner’s
passing reference to “natural” raised an inherency argument. However, even
if we accepted such an argument, Petitioner has not shown in the Petition
that reducing the f-number of Example 1 to 2.45 would “naturally” result in
changing the shape of the lens. The Petition states that changing the shape
was a choice based on letting more light in the lens. Pet. 60.
Patent Owner also asserts Dr. Sasián made several errors in this
calculations concerning this modification to Ogino. PO Resp. 16–17.
Petitioner presents evidence that purportedly shows that despite alleged
clerical errors in Dr. Sasián’s declaration, a person of ordinary skill in the art
“would be successful” in making Petitioner’s proposed lens design, but this
does not explain sufficiently the motivation to make the modification. See
Pet. Reply 24–28. However, even if we accept that these errors were
harmless to Dr. Sasián’s overall analysis, the mere fact that the prior art
could be so modified would not have made the modification obvious unless
the prior art suggested the desirability of the modification. In re Gordon,
733 F.2d 900, 902 (Fed. Cir. 1984).

Tr. 23. We find no testimony from Dr. Sasián or other evidence in the
record to support this attorney argument, therefore we do not rely on it.
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Petitioner needed to provide a sufficient rationale for changing a
feature of Ogino. Petitioner also argues that “changing the curvature of
surfaces within a lens system is a well-known improvement technique that
POSITAs regularly consider,” and cites Ogino itself as stating that the
curvature values can be varied. Pet. Reply 23. Petitioner misses the point.
Petitioner must show that one of ordinary skill would have been motivated
to make the change it suggests, not just that the art would have allowed that
such a change could be made. See Gordon, 733 F.2d at 901.
Patent Owner argues
Dr. Sasian does not explain why he did it or how he did it in
2020, let alone why a POSITA would have been motivated to
make these changes years earlier. (Ex. 2001, Milster Decl.,
¶ 139.) For example, he does not cite to any example of a system
with a bi-convex lens that would have motivated the POSITA to
try this approach, and he doesn’t explain any benefits that flow
from this change. (Id.) Indeed, the only reason he gives for
changing the radii of curvature of the first lens at all (let alone
flipping one from a concave positive radius to a convex negative
radius) is a vague statement that he did it “due to the location of
the aperture.” (Ex. 1003, Sasian Decl. at 108; Ex. 2001, Milster
Decl., ¶ 139).

PO Resp. 62–63. We agree with Patent Owner. Petitioner does not explain
sufficiently why it changed the shape of the lens. Petitioner does not assert
that it was because of some suggestion in the art, rather Petitioner relies on
unsupported conclusory statements by its declarant.
We have reviewed Petitioner’s explanations and supporting evidence
regarding dependent claims 3, 8, 19, and 24, and because Petitioner’s
proposed design with the changed lens shape is used to support its
contentions as to claims 3, 8, 19, and 24, we do not find them persuasive in
accordance with our above findings. See Pet. 51–61. Petitioner, therefore,
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has not demonstrated by a preponderance of the evidence that the combined
teachings of Ogino, Bareau, and Kingslake would have rendered claims 3, 8,
19, and 24 obvious.
H. Asserted Obviousness of Claims 16 and 30 over Chen, Iwasaki, and
Beich
Petitioner asserts that the combination of Chen, Iwasaki, and Beich
teaches or suggests all the limitations of claims 16 and 30, and provides
reasoning as to why one of ordinary skill in the art would have been
prompted to combine the teachings of these references. Pet. 61–84. For the
reasons that follow, we determine that Petitioner has not shown persuasively
that the combination of Chen, Iwasaki, and Beich would have rendered
claims 16 and 30 of the ’897 patent obvious.
Claim 16 - “The lens assembly of claim 18, 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_1 of L11/L1e<3”
Claim 30 - “The lens assembly of claim 18, 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_1 of L11/L1e<3”
Petitioner contends “Chen’s Example 1 with a thinner cover glass as
taught in Iwasaki shows a TTL of 5.985 mm.” Pet. 79. Petitioner also
contends Chen’s Example 1 has an f-number (F#) of 2.661. Id. Petitioner
asserts that the Zemax model of Example 1 of Chen shows that “the L1 lens
has a center thickness of 0.855 mm (see Fig. 24), an edge thickness of 0.293
mm, and a center-to-edge thickness ratio of 2.92. Id. at 79 (Ex. 1020, Fig.
24; Ex. 1003, 94–95, Appx., Fig. 4E).
Petitioner notes that Chen does not provide a diameter for its first
lens. Id. at 80. Because of that fact, Petitioner asserts that “[b]ased on the
teaching of Beich, a POSITA would have sought to limit the diameter of the
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44
first lens so that this would be maintained for easier plastic injection
molding.” Id. at 79 (citing Ex. 1007, 7; Ex. 1003, 94). Specifically,
according to Petitioner, “a POSITA considering the manufacturability of
Chen would have determined the diameter of the first lens such that the lens
would cover the aperture (to allow light passing through the aperture to enter
the lens system) but would also be easy to manufacture.” Id. at 80. Thus,
according to Petitioner, as “shown in the Zemax calculated model in Dr.
Sasián’s Appendix, a POSITA would have determined the thickness of the
edge of the L1 lens to be 0.293 mm (see [Ex. 1003], Appx., Fig. 4E) yielding
a center-to-edge thickness ratio of the L1 lens in Chen’s Example 1 to be
2.92 (i.e., 0.855/0.293) which is less than the claimed ratio of three and
consistent with Beich’s teaching. Id., p.95.” Id. at 80–81.
Patent Owner agrees that Petitioner’s choice of a diameter for the first
lens results in a center-to-edge thickness of 0.292 mm:
Dr. Sasian suggests that a POSITA would choose a semi-
diameter for this first lens (or at least for its object-side surface)
of 1.2375 mm, barely 0.004 mm larger than the semi-diameter of
the stop, 1.2333 mm. (Ex. 1003, Sasian Decl. at 115; Ex. 2001,
Milster Decl., ¶ 142.) He finds that this lens would have a center-
to-edge thickness ratio of 2.92, just under the value of 3 required
by claims 16 and 30. (Ex. 2001, Milster Decl., ¶ 142.)
This diameter is essentially the smallest that it could be
without disrupting other characteristics of Chen that Dr. Sasian
relies upon, such as its f-number. (Ex. 2001, Milster Decl.,
¶ 143.)

PO Resp. 64. However, Patent Owner asserts that the diameter chosen could
not be much larger or smaller “without reducing the entrance pupil diameter
and increasing the f-number” and cannot be made larger than “1.249 mm,
approximately 0.012 mm larger (less than 1% larger) than Dr. Sasian
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Patent 10,330,897 B2
45
proposes.” Id. at 64–66 (citing Ex. 2001 ¶¶ 143–145; Ex. 1003, 112). Thus,
according to Patent Owner, this violates manufacturing tolerances:
The Beich paper also says that the tolerance for the diameter of
the lens is “± 0.020 mm,” and that the displacement between the
front surface of the lens and the back surface is “< 0.020 mm.”
(Ex. 2001, Milster Decl., ¶ 146.) . . . the semi-diameter of the
first lens is only 0.004 mm larger than the stop. (Ex. 2001,
Milster Decl., ¶ 147.) If the lens is too small by 0.020 mm in
diameter (0.010 mm in semi-diameter), this will make the semi-
diameter of the first lens smaller than the semi-diameter of the
stop by 6 μm.

Id. at 66. Additionally, according to Patent Owner, having the “first lens
smaller than the stop will mean that light will leak and scatter around the
lens and cause a haze in the image that is highly undesirable [thus] a
POSITA would make the first lens from Chen larger in diameter than Dr.
Sasian proposes.” Id.
Patent Owner asserts “[o]versizing the 1.2374 mm semi-diameter
surface by even 1% (far less than is required in practice) would make it
1.2499 mm in semi-diameter and would make the center-to-edge thickness
ratio greater than 3. (Ex. 2001, Milster Decl., ¶ 17, Appx. § XI.B.).” Id. at
67. We do not rely on oversizing in this Decision. We find the choice to
oversize is tradeoff that can be made without undermining the motivation to
combine. The mere existence of disadvantages resulting from a
modification does not refute the obviousness of the modification, especially
when the prior art indicates that the modification also offers an advantage.
Tradeoffs regarding features, costs, manufacturability, or the like, do not
necessarily prevent the combination. See Medichem, S.A. v. Rolabo,
S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of action
often has simultaneous advantages and disadvantages, and this does not
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46
necessarily obviate motivation to combine.”); Winner Int’l Royalty Corp. v.
Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another.”); Allied, 825 F.3d at 1381 (“A given
course of action often has simultaneous advantages and disadvantages, and
this does not necessarily obviate motivation to combine.”).
We note that the Federal Circuit specifically found in a context similar
to this that oversizing as suggested in the Optic Handbook relied on by
Patent Owner does not teach away from using other rules of thumb in Beich.
Corephotonics, Ltd., v. Apple Inc., No. 2020-1961, 2021 WL 4944471, at *1
(Fed. Cir. Oct. 25, 2021) (“the Corephotonics Appeal”).
As explained with regard to the ground based on Ogino and Bareau,
we agree with Patent Owner that a person of ordinary skill in the art at the
time of the invention would have considered issues of manufacturability in
determining the edge thickness and would have considered oversizing the
edges of the lens to deal with this potential problem. See PO Resp. at 37–46.
A person of ordinary skill in the art at the time of the invention would also
have recognized that when designing lens elements for crafting via injection
molding, a number of manufacturing realities apply that all promote
maximizing the thickness of the lens element at the edge. In particular, the
Handbook of Optics (Ex. 1019) states that “Surface-tension effects may play
a significant role in the accuracy to which a precision optical surface may be
molded. Particularly in areas of the part where the ratio of surface
area/volume is locally high (corners, edges) . . . .” Id. at 46. As we found in
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regard to the ground based on Ogino and Bareau, these considerations would
not necessarily undermine the motivation to combine.
However, this ground is different from the ground based on Ogino and
Bareau in a significant and dispositive way. As to claims 16 and 30 in this
ground, Petitioner relies on the same reference Beich–that suggests the
design tolerances at issue–to change the diameter of Chen:
a POSITA looking to manufacture Chen’s Example 1 lens
system would have understood the benefit of applying the
teachings of Beich, thereby resulting in an L1 lens in Chen’s
Example 1 with a diameter set for manufacturing so that the
center-to-edge thickness ratio is maintained at less than 3, as
provided for in Chen’s original design.

Pet. 70 (emphasis omitted). But Petitioner then contends one of ordinary
skill would ignore the design tolerance rule that applies to a change of
diameter of the L1 lens, i.e. “[t]he Beich paper also says that the tolerance
for the diameter of the lens is ‘± 0.020 mm,’ and that the displacement
between the front surface of the lens and the back surface is ‘< 0.020 mm.’”
PO Resp. 66. Although the diameter is not claimed, as discussed above,
Patent Owner explains that it is related to the claimed dimensions of the
claimed lens such that a change to the diameter affects claim limitations and,
in fact, Petitioner changes the diameter for the purpose of meeting other
claim limitations. Sur Reply 19–21. We agree with this argument. That is,
we determine that a person of ordinary skill in the art would not have been
motivated to choose the diameter for Chen that Petitioner suggests upon
considering the tolerance rule of Beich.
In response, Petitioner argues that a “lens designer would not have
been bound by these specific manufacturing considerations regardless of the
purpose of the lens design, especially with the only change being using a
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48
thinner cover glass.” Pet. Reply 28. However, Petitioner changes (or sets)
the diameter of Chen as well as using a thinner cover glass. Thus, we are
not persuaded by this argument. Additionally, Petitioner suggests “Patent
Owner complains that the lens design cannot be oversized to meet various
alleged manufacturing tolerances for injection molded lenses.” Id. While
Patent Owner does argue that the lens could not be oversized, it also argues
that the lens as suggested by Petitioner is unacceptable without oversizing.
PO Resp. 67. Specifically, Patent Owner argues “[t]he lens is unacceptable
even without taking into account the need to oversize ‘considerably beyond
the clear apertures.’” Id. As noted above, we do not rely on oversizing but
rather specifically the tolerance rule of Beich.
Petitioner also argues, in conclusory fashion, that “it would have been
obvious for a POSITA to design for different purposes besides ease of
manufacturing that still meet the limitations of claims 16 and 30.” Pet.
Reply 29. We are not persuaded by this late argument. Petitioner relies on
manufacturability explicitly as the motivation to combine Chen, Iwasaki,
and Beich. Pet. 69 (“[A] POSITA would have set a lens diameter . . . [to] be
easier to manufacture.”). Petitioner also makes the conclusory assumption
that a “POSITA would have had the requisite skill to design a lens system
based on Chen’s Example 1 that would meet the manufacturing tolerances
cited by Patent Owner, if required.” Pet. Reply 29.12 Unlike ground 2
above, Petitioner does not explain sufficiently how its proposed lens design
would be changed to take into account the manufacturing tolerance
suggested by Beich. Dr. Sasián, in his reply declaration, suggests that “the

12 We note that Petitioner does not point to other specific rules in Beich or
elsewhere that conflict with or undermine Beich’s discussion of lens
tolerance.
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49
modified Chen Example 1 lens design represents one possible design that
meets the limitations of claims 16 and 30” and cites his original declaration
at pages 85–99. Ex. 1037 ¶ 37. To the contrary, we do not find at those
pages disclosure of any alternative lens design.
Finally, Petitioner suggests, but does not explicitly argue, that the
manufacturing tolerances in Beich are not relevant here because the ’897
patent does not meet the manufacturing tolerances required by Beich. Pet.
Reply 29–30; Ex. 1037 ¶¶ 38–42. Petitioner asserts that the first lens of
Example 1 of Chen is the only lens that satisfies the limitation of claims 16
and 30 of L11/L1e<3 with a L11/L1e ratio of 2.99238. Pet. Reply 30. Thus,
according to Petitioner, “this lens is not sufficient to meet the claims because
it can only be oversized by 0.000759 mm (far less than the 1% larger
tolerance allegedly required, Response, p.67) and still be below the claimed
ratio because there is no room for ‘rounded corners’ or ‘oversizing
considerably beyond the clear apertures.’” Id. at 30.
We note that Patent Owner is not arguing that the claims are limited to
the tolerances in Beich but rather that a person of ordinary skill in the art
“would not have been motivated to make the combination proposed by Dr.
Sasián for ground 4.” PO Resp. 63. Even if the ’897 patent does not take
into account Beich’s manufacturability considerations, Petitioner itself
argues that one of ordinary skill in the art would have taken into account
Beich’s manufacturability considerations at least as to the center-to-edge
thickness ratio. See Pet. 69 (“lens manufactures rely on ‘rules of thumb,’ . . .
in manufacturing lens elements to maintain the ratio of center thickness to
edge thickness to a value less than three (“< 3:1”).”) (citing Ex. 1007, 7).
Additionally, Patent Owner’s declarant points out several errors in Dr.
Sasián’s analysis as to whether the examples in the ’897 specification meet
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the Beich tolerances. Sur-Reply 22–30. We do not need to decide if Dr.
Sasián’s analysis is sufficiently reliable, because, as explained above, even if
we accept Dr. Sasián’s analysis as being correct, we are not persuaded that
Petitioner’s argument that the ’897 specification’s examples do not meet the
manufacturing tolerances would overcome the failure of Petitioner to
provide a sufficient rationale to combine Chen with Beich.
Finally, we acknowledge that the Federal Circuit recently upheld our
final written decision in IPR2019-00030 finding that the petitioner in that
case had shown that Ogino alone and a combination of Ogino and Beich
taught a limitation to “a ratio between a largest optical axis thickness L11
and a circumferential edge thickness L1e of the first lens element of
L11/L1e<3, as to challenged claim 5 [of the ’568 patent].” Corephotonics
Appeal, at *1. We first note that the Corephotonics Appeal had Ogino as a
main reference and did not involve Chen or Iwasaki. Id. at *1. The
Corephotonics Appeal did involve Beich’s rules of thumb such as Beich’s
teaching of “center thickness to edge thickness ratio” of <3:1. Id. at *3. In
fact Patent Owner argued that the “Board did not explain why a relevant
artisan would have applied only the center-to-edge thickness ratio rule from
Beich (to reduce costs and improve manufacturability), ignoring Beich’s
diameter-to-thickness ratio rule.” Id. at *5. However, in the Corephotonics
Appeal “the L11/L1e ratio that is at issue is solely about the first lens
element (L1), not the fifth lens element (L5).” Id. Here, on the other hand,
Patent Owner asserts the same lens to which the center-to-edge thickness
ratio rule is being applied is the one that violates the lens tolerance rule at
issue in this IPR.
Additionally, the Corephotonics Appeal also found that “Nothing in
Ogino or Beich ‘criticize[s], discredit[s], or otherwise discourage[s]
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investigation into, so as to teach away from, selecting the center-to-edge
thickness ratio rule of thumb for L1 without modifying other lens
elements.’” Id. Here, teaching away was not raised or argued but a
tolerance directed at the same lens and dimension at issue could be argued to
teach away for the modification to Chen.
Finally, in the Corephotonics Appeal the Court found patent owner
had not shown a “blanket assertion that any willingness to incur higher costs
or reduced manufacturability . . . would have undermined (rather than
enhanced) the motivation to save costs or improve manufacturability in other
ways, such as by following Beich’s rule of thumb for the center-to-edge
thickness ratio.” Id. at *6. Here we acknowledge that manufacturability can
be a tradeoff but base our decision on the fact that the rule relied on by
Patent Owner in this case is closely tied to the rule Petitioner cites for its
motivation to modify Chen.
Based on the complete record, Petitioner has not demonstrated
sufficiently that the combination of Chen, Iwasaki, and Beich teaches the
limitations of claims 16 and 30. As discussed above, we have reviewed
Petitioner’s explanations and supporting evidence regarding these claims,
and we do not find them persuasive in accordance with our above findings.
See Pet. 61–82. Petitioner, therefore, has not demonstrated by a
preponderance of the evidence that the combined teachings of Chen,
Iwasaki, and Beich would have rendered claims 16 and 30 obvious.
IV. CONCLUSION
For the foregoing reasons, we determine Petitioner has established by
a preponderance of the evidence the unpatentability of claims 1, 2, 4–6 and
9–15, 17, 18, 20–23, 25–29 of the ’897 patent and Petitioner has not
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established by a preponderance of the evidence the unpatentability of claims
3, 8, 16, 19, 24, 30 of the ’897 patent.13
In summary:
Claims
35
U.S.C.
§
Reference(s)/
Basis
Claim(s)
Shown
Unpatentable
Claim(s) Not
Shown
Unpatentable
1, 4, 9–15,
17, 20,
25–29
102(a)
Ogino 1, 4, 9–15, 17, 20, 25–29

2, 5, 6, 18,
21–23
103(a) Ogino, Bareau 2, 5, 6, 18, 21–23
3, 8, 19,
24
103(a) Ogino, Bareau,
Kingslake
3, 8, 19, 24
16, 30 103(a) Chen, Iwasaki, Beich 16, 30
Overall
Outcome
1, 2, 4–6, 9–15,
17, 18, 20–23,
25–29
3, 8, 16, 19,
24, 30

V. ORDER
Accordingly, it is
ORDERED that claims 1, 2, 4–6, 9–15, 17, 18, 20–23, and 25–29 of
U.S. Patent No. 10,330,897 B2 are unpatentable and claims 3, 8, 16, 19, 24,
and 30 of U.S. Patent No. 10,330,897 B2 are not unpatentable;

13 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. §§ 42.8(a)(3), (b)(2).
IPR2020-00878
Patent 10,330,897 B2
53
FURTHER ORDERED that parties to the proceeding seeking judicial
review of this Final Written Decision must comply with the notice and
service requirements of 37 C.F.R. § 90.2.

IPR2020-00878
Patent 10,330,897 B2
54
FOR 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.ipr@haynesboone.com

For PATENT OWNER:

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