Corephotonics, Ltd.

Patent Trials and Appeals Board

Nov 2, 2021

IPR2020-00877 (P.T.A.B. Nov. 2, 2021)

Trials@uspto.gov Paper 26
571-272-7822 Entered: November 2, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC.,
Petitioner,

v.

COREPHOTONICS, LTD.,
Patent Owner.
____________

IPR2020-00877
Patent 10,288,840 B2
____________

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

ULLAGADDI, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
35 U.S.C. § 318(a)
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I. INTRODUCTION
Apple Inc. (“Petitioner”) filed a Petition to institute an inter partes
review of claims 1–7, 11–13, 15, 16, 18, 20, and 21 (“the challenged
claims”) of U.S. Patent No. 10,288,840 B2 (Ex. 1001, “the ’840 patent”).
Paper 2 (“Petition” or “Pet.”). Patent Owner did not file a preliminary
response. We instituted trial on all challenged claims and on all grounds set
forth in the Petition. Paper 7 (“Institution Decision” or “Inst. Dec.”).
After institution, Patent Owner filed a Patent Owner Response
(Paper 12, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s Response
(Paper 13, “Pet. Reply”), and Patent Owner filed a Sur-reply (Paper 18, “PO
Sur-reply”). An oral hearing was held on August 3, 2021, and a copy of the
transcript was entered in the record. Paper 25 (“Tr.”).
We have jurisdiction pursuant to 35 U.S.C. § 6. This Decision is a
Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to
the patentability of the claims on which we instituted trial. Petitioner bears
the burden of proving unpatentability of the challenged claims, and the
burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To
prevail, Petitioner must prove unpatentability by a preponderance of the
evidence. See 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2019).
Having reviewed the arguments and the supporting evidence, we determine
that Petitioner has shown, by a preponderance of the evidence, that 1, 2, 5–7,
11–13, 15, 16, 18, 20, and 21 of the ’840 patent are unpatentable. We
further determine that Petitioner has not shown, by a preponderance of the
evidence, that claims 3 and 4 of the ’840 patent are unpatentable.
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II. BACKGROUND
A. Related Proceedings
Petitioner and Patent Owner identify the following corresponding
district court proceeding: Corephotonics, Ltd. v. Apple Inc., No. 5:19-cv-
04809-LHK (N.D. Cal.). Pet. 1; Paper 6, 1.1 Pending U.S. Application No.
16/276,034 claims priority to the application underlying the ’840 patent.
B. The ’840 Patent
The ’840 patent concerns a mobile electronic device having an
integrated camera. Ex. 1001, code (57). The camera includes a wide camera
unit having a wide lens unit, and a telephoto camera unit having a telephoto
lens unit. Id. at 5:28–30. The telephoto lens unit has a total track length
(TTL) to effective focal length (EFL) ratio smaller than 1 and the wide lens
unit larger has a TTL/EFL ratio of larger than 1. Id. at 5:31–32. The wide
and telephoto lens units provide respectively main and auxiliary
optical/imaging paths. Id. at 17:46–47. Figure 1C, reproduced below,
illustrates a telephoto lens unit. Id. at 7:1–2; 8:22–23.

1 Patent Owner cites Corephotonics, Ltd. v. Apple Inc., 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 erroneously identified as
“Civil Action No. 3:19-cv-4809” on its cover page.
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Figure 1C shows a telephoto lens unit. Id.
Telephoto lens unit 20 includes “multiple lens elements made of
different polymer materials, i.e., materials having different Abbe numbers.”
Id. at 8:22–26. The multiple lens elements define a telephoto lens assembly
22A and field lens assembly 22B on optical axis OA with gap G between
assemblies, as shown in Figure 1C. Id. at 8:26–31. Gap G is larger than
1/5th of the TTL of telephoto lens unit 22A, which corrects for “field
curvature of telephoto lens assembly 22A by the field lens assembly 22B.”
Id. at 8:43–47.
Telephoto lens assembly 22A has at least three lenses, L1, L2, and L3,
in which lens L1 has positive optical power and lenses L2 and L3,
combined, have negative optical power. Id. at 8:48–52. Lenses L2 and L3
are made of polymer materials having Abbe numbers selected to reduce
chromatic aberrations of telephoto lens assembly 22A. Id. at 8:52–55. Field
lens assembly 22B has at least two lenses L4 and L5 which are made of
different polymer materials having different Abbe numbers. Id. at 8:55–58.
Lenses L4 and L5 compensate for residual chromatic aberrations of
telephoto lens assembly 22A that are dispersed when light passes through
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gap G between telephoto lens assembly 22A and field lens assembly 22B.
Id. at 8:58–61.
C. Challenged Claims
Petitioner challenges claims 1–7, 11–13, 15, 16, 18, 20, and 21 of the
’840 patent. Sole independent claim 1 is illustrative and reproduced below.
1. [1.0] A mobile electronic device comprising an
integrated camera,
[1.1] wherein the camera comprises a Wide camera unit
comprising a Wide lens unit and a Telephoto camera unit
comprising a Telephoto lens unit,
[1.2] the Telephoto lens unit and the Wide lens unit
having, respectively, total track length (TTL)/effective focal
length (EFL) ratios smaller and larger than 1 and
[1.3] defining separate Telephoto and Wide optical paths,
[1.4] wherein the Telephoto lens unit comprises multiple
lens elements made of at least two different polymer materials
having different Abbe numbers,
[1.5] wherein the multiple lens elements comprise a first
group of at least three lens elements configured to form a
telephoto lens assembly and a second group of at least two lens
elements,
[1.6] the second group of at least two lens elements spaced
apart from the first group of at least three lens elements by a
predetermined effective gap equal to or larger than 1/5 of the
TTL of the Telephoto lens unit,
[1.7] wherein the first group of at least three lens elements
comprises, in order from an object plane to an image plane along
an optical axis of the Telephoto lens unit, a first lens element
having positive optical power and
[1.8] a pair of second and third lens elements having
together negative optical power such that the Telephoto lens
assembly provides a Telephoto optical effect of the Telephoto
lens unit and
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[1.9] such that the second and third lens elements are each
made of one of the at least two different polymer materials
having a different Abbe number for reducing chromatic
aberrations of the Telephoto lens,
[1.10] wherein the second group of lens elements includes
a fourth lens element and a fifth lens element made of the
different polymer materials having different Abbe numbers and
[1.11] is configured to correct a field curvature and to
compensate for residual chromatic aberrations of the Telephoto
lens assembly dispersed during light passage through the
effective gap between the Telephoto lens assembly and the
second group of at least two lens elements, and
[1.12] wherein the first, third and fifth lens elements have
each an Abbe number greater than 50 and
[1.13] the second and fourth lens elements have each an
Abbe number smaller than 30.2
Ex. 1001, 19:45–20:15.
D. Asserted Grounds of Unpatentability
Petitioner challenges claims 1–7, 11–13, 15, 16, 18, 20, and 21 as
follows. See Pet. 10–11. In support, Petitioner relies on the First and
Second Declarations of Dr. José Sasián (Ex. 1003, Ex. 1022).3

2 Spacing and bracketed numbering are added for ease of readability.
3 Petitioner alternatively references pages and paragraphs when citing Dr.
Sasián’s Declaration. We refer to pages or paragraphs, as appropriate.
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Claim(s)
Challenged
35 U.S.C. §4 Reference(s)/Basis
1, 2, 5, 7, 11–13,
15, 16, 18, 20, 21
103 Parulski5, Huang6, Tang7
3, 4 103 Parulski, Huang, Tang, May8
6 103 Parulski, Huang, Tang, Li II9
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) when available, objective evidence of

4 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. § 103 that
became effective on March 16, 2013. Because the ’840 patent issued from
an application filed after March 16, 2013, we apply the AIA version of the
statutory basis for unpatentability. See Ex. 1001, codes (22), (86).
5 U.S. Patent No. 7,859,588 B2, issued Dec. 28, 2010 (Ex. 1005, Parulski”).
6 U.S. Patent No. 9,726,858 B2, issued Aug. 8, 2017 (Ex. 1006, “Huang”).
Petitioner asserts that Huang is entitled to an effective filing date of
December 30, 2014, the filing date of the Taiwanese application from which
Huang claims foreign priority, because the U.S. application underlying the
Huang patent was filed in English and a certified copy of the Taiwanese
application was received by the Patent Office. Pet. 10.
7 U.S. Patent No. 8,363,337 B2, issued Jan. 29, 2013 (Ex. 1009, “Tang”).
8 U.S. Patent No. 7,561,191 B2, issued July 14, 2009 (Ex. 1011, “May”).
9 U.S. Patent No. 8,189,100 B2, issued May 29, 2012 (Ex. 1018, “Li II”).
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nonobviousness, i.e., secondary considerations. See Graham v. John Deere
Co., 383 U.S. 1, 17–18 (1966).
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (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, 800 F.3d at 1378 (citing
Tech. Licensing Corp. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed.
Cir. 2008)) (discussing the burden of proof in an inter partes review).
Furthermore, Petitioner cannot satisfy its burden of proving obviousness by
employing “mere conclusory statements.” Magnum, 829 F.3d at 1380.
Thus, to prevail in an inter partes review, Petitioner must explain how
the proposed combinations of prior art render the challenged claims
unpatentable.
We analyze the challenges presented in the Petition in accordance
with the above-stated principles.
B. Level of Ordinary Skill in the Art
Petitioner contends
[A] person of ordinary skill in the art (“POSITA”) would include
someone who had, as of the priority date of the ’840 Patent (i) a
Bachelor’s degree in Physics, Optical Sciences, or equivalent
training, as well as (ii) approximately three years of experience
in designing miniature lens systems for mobile device
applications. . . . Such a person would have had experience in
analyzing, tolerancing, adjusting, and optimizing multi-lens
systems, and would have been familiar with the specifications of
lens systems, especially lenses configured for use in mobile
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devices, such as cell phones. . . . In addition, a POSITA would
have known how to use lens design software such as Code V,
Oslo, or Zemax, and would have taken a lens design course. . . .
Such a POSITA would have been familiar with photographic
lenses and with mechanical and electronic devices. Lack of work
experience can be remedied by additional education, and vice
versa.
Pet. 6–7 (citing Ex. 1003, 10). Patent Owner “applies the level of ordinary
skill in the art set forth in the petition and used by the Board in its Institution
Decision.” PO Resp. 3 (Inst. Dec. 8).
We determine that the level of ordinary skill in the art proposed by
Petitioner is consistent with the ’840 patent and the asserted prior art. We
apply Petitioner’s definition in making the findings and conclusions
rendered in this Decision.
C. Claim Construction
For inter partes reviews filed on or after November 13, 2018, we
apply the same claim construction standard used by Article III federal courts
and the ITC, both of which follow Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005) (en banc), and its progeny. 37 C.F.R. § 42.100(b) (2019).
Accordingly, we construe each challenged claim of the ’840 patent to
generally have “the ordinary and customary meaning of such claim as
understood by one of ordinary skill in the art and the prosecution history
pertaining to the patent.” Id.
We construe claim terms to the extent necessary for our analysis on
whether to institute a trial. See, e.g., Nidec Motor Corp. Zhongshan Broad
Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only
construe terms ‘that are in controversy, and only to the extent necessary to
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resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
Independent claim 1 recites “the Telephoto lens unit and the Wide
lens unit having, respectively, total track length (TTL)/effective focal length
(EFL) ratios smaller and larger than 1 and defining separate Telephoto and
Wide optical paths.” Ex. 1001, 19:48–52. Petitioner asserts that “a POSITA
would find, in light of the specification, the term ‘total track length (TTL)’
to include ‘the length of the optical axis spacing between the object-side
surface of the first lens element and the image plane.’” Pet. 8 (citing Ex.
1003, 20) (emphasis omitted). Petitioner further asserts that, although the
Specification of the ’840 patent does not expressly define EFL, “its meaning
is well known in the art, as exemplified in Li ([Ex.] 1007), which states that
‘[t]he focal length of a lens assembly [is] also referred to as the effective
focal length[.]’” Pet. 8–9 (quoting Ex. 1007, 2:59–61) (alterations in the
original). Patent Owner “does not believe that any terms require
construction to resolve the disputes addressed in this response.” PO Resp. 3.
We do not discern a dispute as to the claim terms TTL and EFL in this
proceeding and as such, we need not expressly construe these terms. Nidec
Motor Corp., 868 F.3d at 1017. .
D. Obviousness over Parulski, Huang, and Tang
Petitioner contends that claims 1, 2, 5, 7, 11–13, 15, 16, 18, 20, and 21
are unpatentable as obvious under 35 U.S.C. § 103 over Parulski, Huang,
and Tang. Patent Owner did not dispute Petitioner’s challenge to these
claims. See PO Resp. 1 (explaining that Patent Owner “limits this response
to rebutting” only the ground for claims 3 and 4). For the reasons that
follow, we determine that Petitioner’s showing establishes unpatentability by
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a preponderance of the evidence with respect to the challenge to claims 1, 2,
5, 7, 11–13, 15, 16, 18, 20, and 21.
1. Overview of Parulski
Parulski concerns “a digital camera that uses multiple lenses and
image sensors to provide an improved imaging capability.” See, e.g., Ex.
1005, 1:7–10. In one embodiment, an image capture assembly includes two
image capture stages. Id. at 12:36–45. For example, the image capture
assembly can include a fixed focal length wide angle lens and a fixed focal
length telephoto lens. Id. at 23:28–40. The two image capture stages can be
contained within a single stage for a mobile phone camera, as seen in
Figures 16A and 16B, reproduced below.

Figure 16A of Parulski is a top view of integrated capture
assembly 610 taken along lines 24B-24B in Figure 16B. Id. at
23:29–30.
In both Figures 16A and 16B, integrated capture assembly 610
includes an integrated packaging of optical and imaging components on
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common substrate 620. Id. at 23:31–32. Integrated capture assembly 610
includes first fixed focal length lens 612 and first image sensor 614, as well
as second fixed focal length lens 616 and second image sensor 618. Id. at
23:33–36. First lens 612 is preferably a fixed focal length wide angle lens
that forms an image on first image sensor 614, and second lens 616 is
preferably a fixed focal length telephoto lens that forms an image on the
second image sensor 618. Id. at 23:36–40. Lenses 612 and 616 are both
“oriented in the same direction in order to form images of the same portion
of the overall scene in front of them, albeit with different fields of view.” Id.
at 23:40–43.
2. Overview of Huang
Huang concerns a compact photographing optical lens assembly and
image capturing device. Ex. 1006, 1:16–17. Huang discloses a lens
assembly that corrects astigmatism and balances refractive power to correct
aberrations. Id. at 5:38–52. An exemplary lens assembly is depicted in
Figure 1, reproduced below.
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Figure 1 of Huang is a schematic view of an image capturing
device according to a first embodiment. Id. at 9:19–20.
The lens assembly includes, from an object side to an image side,
aperture stop 100, first though sixth lens elements 110, 120, 130, 140, 150,
160, IR-cut filter 170, image surface 180, and image sensor 190. Id. at 9:26–
31. The optical data for the first embodiment is shown in Table 1,
reproduced below.

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Table 1 depicts optical parameters for the lens arrangement of
Huang’s first embodiment. Id. at 12:53–54.
Table 1 depicts, among other things, lens thicknesses, distances
between lenses, Abbe numbers, and focal lengths. Id.
3. Overview of Tang
Tang concerns a compact imaging lens assembly. Ex. 1009, 1:7. An
exemplary lens assembly is depicted in Figure 1A, reproduced below.
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Figure 1A of Tang shows an imaging lens assembly in
accordance with a first embodiment. Id. at 7:66–67.
The imaging lens assembly includes, from an object side to an image
side, first though fifth lens elements 100, 110, 120, 130, 140, IR filter 160,
and image plane 170. Id. at 8:2–29. The optical data of the first
embodiment are depicted in Table 1 of Figure 7, reproduced below.
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Figure 7 depicts the optical parameters for the lens arrangement
of Tang’s first embodiment. Id. at 4:5–6.
Figure 7 depicts, among other things, lens thicknesses, distances
between lenses, Abbe numbers, and focal lengths.
4. Independent Claim 1
[1.0] “A mobile electronic device comprising an integrated
camera”
Petitioner contends that Parulski discloses a “mobile phone camera
with two image capture stages.” Pet. 26 (quoting Ex. 1005, 9:5–6).
According to Petitioner, an ordinarily skilled artisan would have understood
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this disclosure to be a mobile electronic device that includes an integrated
camera. Id. at 27–28 (citing Ex. 1003, 38; Ex. 1005, 23:4–20).
Parulski discloses that “[t]he concept of multiple lenses and multiple
sensors, and the use of an integrated image capture assembly, may be
adapted for use in a cell phone of the type having a picture taking
capability.” Ex. 1005, 23:4–7.
Patent Owner does not dispute Petitioner’s showing as to this
limitation. See generally PO Resp.
We have reviewed the record developed during trial, and find that
Petitioner has shown that the cited portions of Parulski teach the preamble of
independent claim 1.10
[1.1] “wherein the camera comprises a Wide camera unit
comprising a Wide lens unit and a Telephoto camera unit
comprising a Telephoto lens unit”
Petitioner contends that Parulski’s “integrated capture assembly 610
includes ‘a fixed focal length wide angle lens’ (612) and ‘fixed focal length
telephoto lens’ (610).”11 Pet. 28 (citing Ex. 1005, 23:28–43) (emphasis
omitted). Petitioner further contends that “Parulski’s first lens 612 is a
telephoto camera unit comprising a telephoto lens unit and Parulski’s second
lens 614 is a wide camera unit comprising a wide lens unit.” Id. at 29 (citing
Ex. 1005, 23:28–43; Ex. 1003, 40); see also n.11 (noting that Petitioner’s
cites to element numbers are incorrect). Petitioner’s annotated Figures 16A
and 16B, however, appear to point to wide angle lens 612 and first image

10 In light of this determination, the panel need not decide whether the
preamble is limiting.
11 In its discussion, Petitioner references the cited elements with inaccurate
reference numbers. See Pet. 28–29.
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sensor 614 as teaching the claimed wide camera unit, and telephoto lens 616
and second image sensor 618 as teaching the claimed telephoto camera
unit.12
The cited portion of Parulski discloses, in relevant part,
[T]he assembly 610 includes a first fixed focal length lens 612
and a first image sensor 614, and a second fixed focal length lens
616 and a second image sensor 618. The first lens 612, preferably
a fixed focal length wide angle lens (such as a 40 mm equiv.
lens), forms an image on the first image sensor 614, and the
second lens 616, preferably fixed focal length telephoto lens
(such as 100 mm equiv. lens), forms an image on the second
image sensor 618.
Ex. 1005, 23:33–40.
Patent Owner does not dispute Petitioner’s showing as to this
limitation. See generally PO Resp.
We have reviewed the record developed during trial, and find that
Petitioner’s annotated Figures 16A and 16B and the cited portion in column
23 of Parulski sufficiently support Petitioner’s contentions that Parulski
teaches the claimed camera.
[1.2] “the Telephoto lens unit and the Wide lens unit having,
respectively, total track length (TTL)/effective focal length (EFL)
ratios smaller and larger than 1 and”
Petitioner contends that the combination of Parulski’s wide angle lens
612 and Tang’s optical parameters for a specific wide angle lens assembly
renders obvious the claimed TTL to EFL ratio greater than one. See Pet. 29–
34. Likewise, Petitioner contends that the combination of Parulski’s

12 We note that Parulski uses different names for elements identified by the
same reference number throughout its specification. See Ex. 1005. We
similarly use Parulski’s element names as appropriate.
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telephoto lens 616 and Huang’s optical parameters for a specific telephoto
lens assembly renders obvious the claimed TTL to EFL ratio smaller than
one. Id. at 29, 34–39.
In particular, Petitioner contends that in Huang’s Example 1, the TTL
is 5.348 mm, which Petitioner calculates by “summing the distances
between the object-side surface of the first lens 100 and the image surface
180 . . . ” which are shown in the thickness column of Huang’s Table 1. Id.
at 30–32 (citing Ex. 1006, Table 1 (spanning columns 12–13); Ex. 1003, 43).
Petitioner points to Huang’s first embodiment focal length (f) of the lens
assembly, 6.60 mm, and contends an ordinarily skilled artisan would have
understood this to be the EFL of Huang’s lens assembly. Id. at 33 (citing
Ex. 1006, Table 1). Petitioner calculates Huang’s ratio of TTL to EFL as
5.384/6.60 = 0.81. Id. at 33–34. We presume Petitioner’s calculation of the
ratio includes a typographical error and should be a ratio of 5.348 to 6.60,
which equates to 0.81 and is smaller than one. See id. at 32 (discussing
5.348 mm as the TTL).13
Petitioner further contends that in Tang’s Embodiment 1, the “wide
angle lens unit has a TTL of 4.878 mm and an EFL of 4.34 mm, thus
yielding a ratio of 4.878/4.34 which is larger than one.” Id. at 35.
According to Petitioner, the TTL of Tang’s Embodiment 1 lens can be
determined by “summing the distances between the object-side surface of
the first lens 100 and the image plane 170 . . . ” using Tang’s Table 1, and
dividing by Tang’s focal length (f), 4.34 mm, which Petitioner contends is
the EFL. Id. at 35–37 (citing Ex. 1009, Figs. 1A, 7, 8:51). Petitioner

13 The ratio of 5.384 to 6.60 is also less than 1.
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calculates the Tang’s first embodiment to have a ratio of 4.878 to 4.34,
which is 1.12. Id. at 38 (citing Ex. 1003, 47). Petitioner’s calculations are
undisputed. See generally PO Resp.
(1) Petitioner’s Rationale for Combining
Petitioner presents the following reasons in support of combining the
teachings of Parulski and Huang.
First, that Parulski generally teaches a wide angle lens and a telephoto
lens, but “does not provide lens prescription data for either the wide or
telephoto fixed-focal length lens in image assembly 610.” Pet. 20.
According to Petitioner, “[s]ince Parulski offers nothing more, a POSITA
looking to implement this embodiment would have sought a suitable
telephoto lens unit to incorporate in the cell phone camera, like Huang’s
embodiment.” Id. (citing Ex. 1003, 31). Second, that Huang’s lenses are
“just one possible option” because they are applicable to mobile devices in
general and smart phones in particular. Id. at 21 (citing Ex. 1003, 32; Ex.
1006, 8:44–51, 35:53–60). Third, that Parulski seeks to use lenses to reduce
cell phone thickness, and Huang’s telephoto lens “has the benefits of
reducing both the manufacturing costs and the track length of the lens
assembly (i.e., thickness).” Id. at 22 (citing Ex. 1005, 24:20–27; Ex. 1006,
7:56–8:3). Fourth, that an ordinary skilled artisan would have had a
reasonable expectation of success in making the combination, based on the
similarity between the fields of view of Parulski and Huang’s lenses. Id. at
23–24 (citing Ex. 1003, 35; Ex. 1006, Table 1; Ex. 1019, 9–10).
Petitioner presents the following reasons in support of combining the
teachings of Parulski and Tang.
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Fifth, that “Parulski does not provide lens prescription data for either
the wide or telephoto fixed-focal length lens unit in image assembly 610,”
and “[t]o create a working lens image assembly 610,” the ordinarily skilled
artisan would have looked to Tang, “which provides not only a similar fixed-
focal length wide-angle lens, but also provides lens data that specifies the
properties and configuration . . . .” Id. at 24–25 (citing Ex. 1003, 35; Ex.
1009, Fig. 7). Sixth, that “Tang describes the use of its lens in ‘portable
electronic devices’ such as smart phones and PDAs.” Id. at 25 (citing Ex.
1003, 35; Ex. 1009, 1:6–8, 1:37–38). Seventh, that “Tang further states that
its lens ‘features better image quality, maintains a moderate total track
length and is applicable to compact portable electronic products,’ thus
satisfying Parulski’s desire for selecting lenses that offer reduced thickness
compatible with a mobile device.” Id. at 25 (citing Ex. 1005, 24:20–27; Ex.
1009, 1:47–50).14

14 Petitioner also argues that that a “POSITA would have understood Tang’s
wide-angle lens with a similar HFOV [half field of view] of 33.2 degrees to
be essentially equivalent to Parulski’s wide-angle lens, based on the
similarity between the fields of view of the lenses.” Id. (citing Ex. 1003, 36;
Ex. 1005, 23:23–43; Ex. 1009, Fig. 7; Ex. 1019, 9–10 (“A wide-angle lens
will cover an angular semifield of about 30° to 35°”)). Petitioner calculates
Parulski’s HFOV as 28.40 degrees for a 35 mm lens. Id. (citing Ex. 1016,
107). Petitioner misquotes Kingslake (Ex. 1019) and cites the wrong pages
of Kingslake––we cite to the original page numbers of the Kingslake text.
We do not address this eighth reason in light of Petitioner’s seven other
reasons that we find persuasive and in light of the fact that Patent Owner
does not dispute this reason, nor any of the seven reasons set forth in this
section and discussed in the following section.
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(2) Discussion of Rationale for Combining
We have reviewed the record developed at trial including the cited
portions of Parulski, Huang, and Tang. We determine that Petitioner has
supported its seven reasons for combining Parulski, Huang, and Tang with
sufficient rational underpinning evidenced by the exhibits cited above.
Patent Owner does not dispute Petitioner’s rationale for combining.
See generally PO Resp. We determine that Petitioner has shown that an
ordinarily skilled artisan would have been motivated to combine Parulski,
Huang, and Tang, and that such motivation is supported by sufficient
rational underpinning.
Based on the complete record developed at trial, we determine that
cited portions of Parulski, Huang, and Tang sufficiently support Petitioner’s
contentions with respect to the telephoto lens unit and the wide lens unit as
claimed.
[1.3] “defining separate Telephoto and Wide optical paths”
Petitioner provides annotated versions of Figures 16A and 16B of
Parulski that add a dashed blue line through each of wide-angle lens unit 612
and telephoto lens unit 616 and contends “[a] POSITA would have
understood that light passing through the Wide camera unit to the first
sensor 614 defines a Wide optical path and the light passing through the
Telephoto camera unit to the second sensor 618 defines a separate Telephoto
optical path.” Pet. 40 (citing Ex. 1005, Figs. 16A, 16B; Ex. 1003, 50–51).
Patent Owner does not dispute Petitioner’s showing as to this
limitation. See generally PO Resp.
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We have reviewed the record developed during trial, and find that the
cited portions of Parulski sufficiently support Petitioner’s contentions that
Parulski teaches the claimed optical paths.
[1.4] “wherein the Telephoto lens unit comprises multiple lens
elements made of at least two different polymer materials having
different Abbe numbers”
Petitioner contends that “Huang’s Example 1 lens is listed as plastic,
which a POSITA would understand to be a polymer material.” Pet. 44
(citing Ex. 1006, Table 1; Ex. 1003, 53). As identified by Petitioner,
Huang’s plastic lenses comprising its lens assembly are disclosed as having
different Abbe numbers, ranging from 21.4 to 55.9. Id. at 44–45 (citing Ex.
1006, Table 1); see Ex. 1001, 8:25–27 (“lens elements made of different
polymer materials, i.e., materials having different Abbe numbers.”).
Patent Owner does not dispute Petitioner’s showing as to this
limitation. See generally PO Resp.
We have reviewed the record developed during trial, and find that the
cited portions in Huang’s Table 1 sufficiently support Petitioner’s
contentions that Huang teaches lenses of different polymer materials having
different Abbe numbers.
[1.5] “wherein the multiple lens elements comprise a first group
of at least three lens elements configured to form a telephoto lens
assembly and a second group of at least two lens elements”
Petitioner contends that Figure 1 of Huang depicts a first group of
lenses 110, 120, 130 and second group of lenses 140, 150, and 160. Pet. 45–
46. According to Petitioner’s first interpretation, the first group of lenses
“‘form a telephoto lens assembly’ because its TTL is less than its EFL
(5.348 mm<6.60 mm).” Id. at 46 (citing Ex. 1006, Table 1). Under this
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theory, Petitioner appears to take the position that the entire telephoto lens
unit, including the first group and the second group, forms a telephoto lens
assembly.
Under an alternative theory, Petitioner contends that if the claim
limitation is interpreted such that the first group of lenses together form a
telephoto lens assembly with TTL|f2|> 1.5|f1| and wherein the Telephoto
lens unit has an F# smaller than 3.2, wherein the Telephoto lens unit TTL is
smaller than 6.2 mm.” Ex. 1001, 21:4–9. Claim 20 depends from claim 1.
According to Petitioner, “in Table 1, Huang’s Example 1 lens system
includes lenses L1, L2, and L3 having focal lengths of f1=2.26 mm,
f2=-3.57 mm, and f3=-8.42 mm, respectively.” Pet. 82–83. Petitioner
sufficiently demonstrates that the focal lengths disclosed in Huang meet the
condition recited in claim 20: 1.2|-8.42|>|-3.57|>1.5(2.26) =
10.104>3.57>3.39. Id. The second and third wherein clauses of claim 20
are the same as the limitations recited in claim 18. Petitioner points to its
showing for claim 18 to meet the second and third wherein clauses, which
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we consider persuasive for the same reasons as set forth above with respect
to claim 18.
Patent Owner does not dispute Petitioner’s showing as to this claim.
See generally PO Resp.
We have reviewed Huang’s Table 1 and Petitioner’s calculations and
are persuaded that they sufficiently support Petitioner’s contentions so as to
establish unpatentability by a preponderance of the evidence with respect to
the challenge to dependent claim 20 over the combination Parulski, Huang,
and Tang.
11. Dependent Claim 21
Claim 21 recites “wherein the Telephoto camera unit includes an
image sensor with an image sensor size ¼" or ⅓".” Ex. 1001, 21:10–12.
According to Petitioner,
Huang’s Example 1 telephoto lens and Tang’s
Embodiment 1 wide-angle lens produce image heights of 2.0 mm
and 2.86 mm, respectively. Using the formula provided by Smith
as discussed above, Huang’s Example 1 lens has a 4 mm diagonal
and Tang’s Embodiment 1 wide-angle lens has a 5.72 mm
diagonal. A POSITA would have understood these diagonals to
be compatible with sensor diagonals for ¼” and ⅓” sensors, with
diagonals of about 4.4 mm and 6 mm. Furthermore, a POSITA
would have understood that the use of the lens assemblies of
Huang and Tang with ¼” and ⅓” sensors would avoid clipping
the lens image, or providing many more unnecessary pixels as a
½” sensor would provide.
Furthermore, a POSITA would have understood that the
lens assemblies of Huang and Tang are designed for electronic
sensors such as a CCD or CMOS, and would therefore be
motivated to provide a suitable sensor with these lenses. A
POSITA would have been motivated to provide Huang’s
telephoto lens with an image sensor having a ¼” or ⅓” format to
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meet cost, size, and other design requirements of modern cell
phones.
Pet. 84–85 (citing Ex. 1005, 7:28–31, 24:20–31; Ex. 1006, 1:20–30, Fig. 2;
Ex. 1009, 1:10–19, Fig. 1B; Ex. 1015, 26; Ex. 1003, 84–85).20
Patent Owner does not dispute Petitioner’s showing as to this claim.
See generally PO Resp.
Although Huang does not explicitly disclose the size of its sensor, we
have reviewed the cited portions and determine that they sufficiently support
Petitioner’s contentions so as to establish unpatentability by a preponderance
of the evidence with respect to the challenge to dependent claim 21 over the
combination Parulski, Huang, and Tang.
E. Obviousness over Parulski, Huang, Tang, and May
Petitioner contends that claims 3 and 4 are unpatentable as obvious
under 35 U.S.C. § 103 over Parulski, Huang, Tang, and May. For the
reasons that follow, we determine that Petitioner’s showing is not
sufficiently supported so as to establish unpatentability by a preponderance
of the evidence with respect to the challenge to claims 3 and 4.
1. Overview of May
May concerns “a digital camera that uses multiple lenses and image
sensors to provide an extended zoom range.” Ex. 1011, 1:8–10. By
providing a plurality of optical image capture modalities, each having a lens-
sensor combination with a different focal length or combination of focal
lengths (i.e., a zoom factor), “a large zoom ratio, e.g., 10:1, can be
accomplished in a smaller scale space at lower cost with higher quality
optical results than heretofore achieved.” Id. at 4:45–54.

20 Smith (Ex. 1015) does not have a page 26 as cited by Petitioner.
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An exemplary embodiment, a “folded lens assembly configuration,” is
depicted in Figure 10D, reproduced below.

Figure 10A is an optical layout of an embodiment of
image capture assembly 1. Id. at 7:4–8.
According to May,
in FIG. 10A, an image capture assembly 1 includes the first lens
2 and the first image sensor 12 mounted at opposing ends of a
first optical relay subassembly la having a folded optical path
arranged between the first image sensor 12 and the lens 2. The
first lens 2, which preferably is a fixed focal length wide angle
lens, forms a first image of a scene on the first image sensor 12.
The image capture assembly 1 also includes the zoom lens 3 and
the second image sensor 14 mounted at opposing ends of a
second optical relay subassembly lb having a folded optical path
arranged between the second image sensor 14 and the zoom lens
3. The zoom lens 3, which has a range of focal lengths adjustable
between a minimum focal length and a maximum focal length,
forms a second image of the scene on the second image sensor
14. In this embodiment, the first lens 2 is a wide angle lens having
a focal length less, and preferably substantially less, than the
minimum focal length of the zoom lens 3.
Id. at 7:19–35.
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Another exemplary embodiment, a “non-folded lens assembly
configuration” is depicted in Figure 24A, reproduced below.

Figure 24A is a schematic sectional view of an image capturing
assembly for a cell phone. Id. at 23:32–36.
“[A]ssembly 610 contains an integrated packaging of optical and imaging
components on common substrate 620,” and includes first fixed focal length
lens 612 and first image sensor 614, and second fixed focal length lens 616
and second image sensor 618. Id. at 23:35–40. The sensors in the image
capture assembly may be positioned next to each other on a common circuit
board assembly, or may be packaged in a common integrated circuit
package. Id. at 10:14–17.
2. Dependent Claims 3 and 4
Claim 3 recites “wherein the Wide and Telephoto camera units are
mounted on separate printed circuit boards.” Ex. 1001, 20:21–26.
Petitioner intermingles its contentions about how a POSITA would
have understood May to teach the limitation of claim 3 and its rationale for
combining May with Parulski, Huang, and Tang. We address these issues
separately.
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Petitioner’s Initial Contentions Regarding May’s Teachings
Petitioner cites elements from both May’s folded configuration (see,
e.g., Ex. 1011, Figs. 10D–10F) and its non-folded configuration (see, e.g.,
id. at Fig. 24A).
Petitioner contends that “a POSITA would understand that each
camera of the image capture assembly includes a sensor (i.e., 12a, 12b, 14,
16) mounted on a different printed circuit board,” as disclosed in May. Pet.
86 (citing Ex. 1011, Figs. 10D–10F, ¶¶ 48, 58), 91–92 (citing Ex. 1003, 92;
Ex. 1011, Figs. 10D–10F, 7:4–15).21 Petitioner further contends that
May specifically describes embodiments with a telephoto lens
and a wide-angle lens in reference to Fig. 10D: “[i]n a fourth
embodiment, the digital camera employs a first fixed focal length
lens 2a with a first image sensor 12a, and a second fixed focal
length lens 2b with a second image sensor 12b . . . In this
embodiment, the first fixed focal length lens 2a is preferably a
wide angle lens and second fixed focal lens 2b is a telephoto
lens.”
Id. at 87–88 (quoting Ex. 1011, 8:15–30). Petitioner also contends that
“May additionally teaches that the cameras, including a wide-angle and
telephoto lens, are mounted on different subassemblies 1a, 2a and
‘positioned next to each other on a common circuit board assembly.’” Id. at
89 (Ex. 1011, Figs. 10D-10F, 7:4–15, 10:14–17) (emphasis added).
Petitioner further contends

21 We understand Dr. Sasián’s testimony to reference paragraph numbers in
the pre-grant publication of the May patent (U.S. Patent Application Pub.
2006/0187338 A1). We have reviewed column 7, lines 4–15 and column 10,
lines 6–23 in the May patent––the subject matter disclosed therein
corresponds to the subject matter in paragraphs 48 and 58 of the pre-grant
publication.
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A POSITA would have also understood that each sensor is
disposed on a printed circuit board extending along a plane (such
as sensor 618 on substrate 620 above). For example, each of the
camera subassemblies of May is mounted on a substrate that also
carries other electronic components (e.g., an autofocus
mechanism), including a flex connector (626) and therefore is
understood to be a printed circuit board as claimed.
Id. at 87 (citing Ex. 1005, 23:28–40, Figs. 16A–16B; Ex. 1011, Figs. 24A–
24B, 23:48–57). Petitioner points to “camera subassemblies including a
lens, a lens barrel, and IR [infrared] filter, and an image sensor” and “flex
connector 626” in both Parulski and May to support its contention that “a
POSITA would have understood that both Parulski and May teach mounting
Wide and Telephoto camera units on separate printed circuit boards.” Id. at
92–93 (citing Ex. 1005, Figs. 1, 16A–16B, 12:42–54, 23:28–40, 23:44–50,
23:48–54; Ex. 1011, Figs. 1, 24A–24B, 10:60–67, 23:48–57; Ex. 1003, 91–
92).
To support its contentions, Petitioner asserts that “[t]he inclusion of a
camera module on a printed circuit board in this fashion was well-known in
the art, as evidenced by Ryu (APPL-1012).” Id. at 90 (citing Ex. 1003 ¶ 74;
Ex. 1012, code (57), Fig. 8, 1:30–50).
Petitioner’s Initial Contentions Regarding a Rationale for
Combining
First and second, Petitioner contends that one of ordinary skill in the
art would have combined May with Parulski, Huang, and Tang because May
and Parulski share an inventor in common, “are in the same technical field,”
“are analogous prior art,” and “are in the same field of endeavor.” Pet. 88–
89 (citing Ex. 1003 ¶ 71; Ex. 1005, 9:8–10; Ex. 1006, 8:44–51; Ex. 1009,
1:6–8; Ex. 1011, 4:27–28).
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Third, Petitioner contends that “a POSITA would have understood
that Huang’s Example 1 lens assembly and Tang’s Embodiment 1 lens
assembly have different track lengths, so the image sensors would naturally
be placed at different planes.” Id. at 90 (citing Ex. 1003 ¶ 75; Ex. 1006,
Table 1; Ex. 1009, Table 1).
Fourth, Petitioner contends that
a POSITA would have understood that placing the wide and
telephoto lens units of Parulski on different substrates with the
ability to vary their layout would provide a greater range of
optical performance and more economically produce camera
lenses . . . [and] provide a cost savings as compared to a single
zoom lens camera.
Id. at 93 (citing Ex. 1003, 93; Ex. 1005, 6:20–44, 8:15–30, 10:37–59; Ex.
1011, 4:6–15, 45–54); see also id. at 90 (citing Ex. 1003 ¶¶ 76, 77)
(collectively reiterating that the combination would “provide a greater range
of optical performance and more economically produce camera lenses” and
“would provide cost savings as compared to a single zoom lens camera”).
With respect to this reason, Petitioner elaborates that a POSITA
would have been motivated to make the combination because: “May’s image
capture assembly layout [] provide[s] additional flexibility for optical
performance and camera lens arrangement” (Pet. 89 (citing Ex. 1003 ¶ 73;
Ex. 1011, 4:19–24)); “May’s mounting, arrangement, and modularity of the
camera subassemblies is desirable in designing and implementing a
photographic camera” (id. (citing Ex. 1003 ¶ 74)); and “May states that the
various embodiments of its image capture assembly with multiple cameras
‘can reduce the cost and size of the camera, and improve its optical
performance’” (id. at 88 (citing Ex. 1011, 6:20–24)); see also id. at 90
(citing Ex. 1011, 4:6–15, 6:20–44, 10:37–59) (reiterating that “May’s
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various image capture assemblies offer the additional benefit of reduction of
size and cost of the camera and improvement of its optical performance”).
Patent Owner’s Contentions
Patent Owner contends that “Apple’s petition does not explain how it
proposes using the Huang and Tang lenses in May’s layout for folded
lenses.” PO Resp. 7. Patent Owner further contends that “[t]he description
of the folded lens layouts that Apple quotes describes ‘a common circuit
board assembly’” and “the non-folded Figure 24A layout is described as
having a single ‘substrate 620’ with electronic circuit components ‘such as
resistors, capacitors and power management components’ mounted on it.”
Id. at 9 (citing Ex. 1011, 10:14–17, 23:48–57; Pet. 88–90).
Patent Owner also contends that the “cost and size benefits cited in
May are not tied to the use of separate circuit boards.” Id. at 10. Patent
Owner contends that “[t]he claims of reduced cost from using separate
circuit boards also defy common sense,” and that, instead, “combin[ing]
multiple components onto a single board [is] a way to reduce costs.” Id. at
11.
Patent Owner still further contends that “Dr. Sasián’s declaration and
CV suggest that he is a highly experienced designer of lenses and teacher of
lens design,” but that Petitioner “provide[s] no reason to believe that Dr.
Sasián has any expertise in circuit board assembly or costs [thereof] that
would be useful to this Board.” Id. at 12 (citing Ex. 1003 ¶¶ 6–17; Ex.
1004).
Petitioner’s Responsive Contentions
Pointing to May’s Fig. 24A with substrate 620 as teaching a printed
circuit board, Petitioner contends that a “POSITA would have recognized
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May’s other optical assemblies would also include image sensors mounted
on a PCB [printed circuit board].” Pet. Reply 8 (citing Pet. 90; Ex. 1003 ¶
67; Ex. 1011, Fig. 17; Ex. 1022 ¶ 13). Petitioner more particularly contends
that “a POSITA would have understood that the image sensors being in
different planes in May’s embodiments shows that the image sensor on each
subassembly is mounted on its own PCB.” Id. at 9 (citing Pet. 91–92; Ex.
1003 ¶¶ 66–67, 86; Ex. 1022 ¶ 15; Ex. 1005, Figs. 15A–15C, 16A–16B,
23:28–40; Ex. 1011, Figs. 10D–10F); see id. at 8–9 (citing Ex. 1003 ¶¶ 66,
74; Pet. 89–90; Ex. 1022 ¶ 14). Petitioner explains that “[s]ince each
subassembly has a sensor mounted in a different orientation, a POSITA
would have understood each sensor to be mounted on a different PCB due to
the image sensors not being parallel and in the same plane.” Id. at 11 (citing
Ex. 1022 ¶ 18).
Petitioner explains that “a POSITA would have understood May’s
modular camera subassemblies (e.g., as shown in Figs. 10D-10F) to apply to
both folded and non-folded fixed-lens configurations” and as such, “[a]
POSITA would have been motivated to apply the teachings of May in a non-
folded configuration to the wide-angle lens of Tang and the telephoto lens of
Huang, at least because these lenses have nonfolded layouts.” Id. at 20
(citing Pet 95; Ex. 1003, 96; Ex. 1006, Table 1; Ex. 1009, Table 1; Ex. 1011,
23:8–11; Ex. 1022 ¶ 30).
Petitioner further explains that “May’s teachings that these camera
subassemblies are modular would have indicated to a POSITA that the
camera subassemblies in these embodiments use multiple printed circuit
boards.” Id. at 11 (citing Pet. 87, 92; Ex. 1022 ¶ 19). Petitioner asserts that
“[b]ecause May shows that each of these camera subassemblies as separate
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and oriented in different configurations, a POSITA would have understood
that May teaches that its camera subassemblies are modular, and thus
teaches the use of different circuit boards, distinct, and spaced apart.” Id. at
11–12 (citing Pet. 89–90; Ex. 1003 ¶¶ 66, 74, p. 93; Ex. 1011, Figs. 10A–
15C, 9:54–59; Ex. 1022 ¶ 20); see also id. at 12 (citing Pet. 89–90; Ex. 1003
¶¶ 66, 73–74; Ex. 1022 ¶ 21) (“May teaches independent, modular optical
assemblies . . . [a] POSITA would have understood May to teach that the
camera subassemblies are mounted on separate PCBs to maintain their
modular nature.”).
Petitioner further contends that “May’s modular subassemblies would
have made it easier to rearrange lenses to accommodate other components
such as electronics, screens, and batteries within the ‘confined space of the
digital camera.’” Pet. Reply 17 (citing Ex. 1011, 9:19–26; Ex. 1022 ¶ 26).
Petitioner also contends that “[t]he use of modular subassemblies on
different boards would also allow the use of wide-angle and telephoto lenses
optimized for their specific purposes, without trying to align them on the
same plane so that they are mounted on the same PCB [printed circuit
board].” Id. (citing Pet. 90).
Petitioner contends that “[i]n a camera incorporating the lens designs
of Huang and Tang (each with a different track length), sensors would be
placed at different distances from the lens, as in the May examples” and that
“[a] POSITA would look to May’s teachings of alternative ways of
assembling those camera modules, including having them on the same plane
or separate planes,” and further that “[i]n the case that the camera modules
are on separate planes, they would also be on different PCBs [printed circuit
boards].” Id. at 19 (citing Ex. 1022 ¶ 29).
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Overview of Analysis of Dependent Claims 3 and 4
As to whether Petitioner is relying on May’s embodiments
individually, in the alternative, or in combination with each other, during the
hearing, Petitioner clarified its position as follows:
MR. MAUCOTEL: Our combination combines May with the
telephoto assemblies or the telephoto lens of Huang and the
wide-angle lens of Tang. These are non-folded lenses and they
have different track lengths. So, given this art that a POSITA
would have in front of them, they would look to the instructions
of May that have to do with imaging assemblies that have
different track lengths and can be placed at different
orientations. So, that's why we rely on Figures 10D through F
of May.
Tr. 16:8–14 (emphasis added). Petitioner further clarified that:
MR. MAUCOTEL: And a POSITA would -- and May, in Figure
24A, showing non-folded lenses, it works in this case for two
lenses mounted on a single PCB because the track length is the
same for those imaging assemblies.
* * *
. . . what we're relying on for May, again, kind of going back to
Figures 10E through F, we're not relying on the actual lenses of
May. In fact, we're relying on the lenses of Huang and Tang
instead, which are non-folded lenses. They are linear lenses that
would extend straight down the page. We're using those imaging
assemblies; however, what we're using for May is the teachings
that imaging assemblies are mounted on printed circuit boards
and each imaging assembly would have its own printed circuit
boards. That's what we're using for May.
Id. at 15:4–6, 22:11–19 (emphases added). During the hearing, Petitioner
further asserted that
MR. MAUCTOEL: We’d also like to point out that both May
and Parulski include both folded and non-folded lens designs and
use them interchangeably. So, there's no problem with jumping
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between the folded and non-folded lens designs. They stand for
the same proposition.
Id. at 24:4–8; see also id. at 15:1–3 (Mr. Maucotel arguing that “a POSITA
would understand -- so, an interesting aspect of May is it uses folded and
non-folded configurations interchangeably”).
Based on the Petition, Petitioner’s Reply, and arguments presented
during the hearing, we understand Petitioner to rely on May’s non-folded
configuration––because Huang and Tang have non-folded lens assemblies––
to teach non-folded camera subassemblies on a printed circuit board, and
May’s folded configuration to teach that there is a separate printed circuit
board for each of the non-folded camera subassemblies.
Contrary to Petitioner’s assertion, whether May’s invention can
interchangeably rely on its folded or non-folded configurations is not the
relevant inquiry. Instead, we consider whether (1) given the teachings of
May a POSITA would have understood that image sensors 12a through 12d
of May’s Figures 10D–10F each have their own, separate printed circuit
board and whether (2) a POSITA would have understood May or Parulski’s
flex connectors to teach or suggest connecting one printed circuit board to
another printed circuit board.
Analysis of Whether a POSITA Would Have Understood
May to Teach or Suggest “separate printed circuit boards”
in Figures 10D through 10F
We are not persuaded by Petitioner’s argument that, because May’s
Figures 10D–10F depict image sensors 12a through 12d on different planes,
each image sensor would have been understood by a POSITA to be
connected to its own, separate printed circuit board and in a planar fashion.
Initially, we find that Petitioner has not shown sufficient evidence that May
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discloses separate printed circuit boards. Pet 91–92 (citing Ex. 1003, 92; Ex.
1011, 7:4–15, Figs. 10D–10F). The portions of May cited in the Petition do
not teach or suggest more than one printed circuit board, let alone placing
each different type of lens unit (i.e., the claimed Wide and Telephoto lens
units) on separate printed circuit boards as claimed. See Ex. 1011, Figs.
10D–10F, Fig. 24A, 7:4–15. We have considered all of Dr. Sasián’s
testimony (Ex. 1003 ¶¶ 65–73; Ex. 1022 ¶¶ 8–35; Ex. 2003) and supporting
evidence, and it is not persuasive that May teaches or suggests placing
different lens units on separate printed circuit boards. Although Dr. Sasián
cites to evidence, we find that evidence does not support his position and
thus is unavailing, for the reasons discussed below.
As Patent Owner observes, “[n]othing in May’s description of these
figures says that there are printed circuit boards for each image sensor, as
opposed to a single board that could be located behind the image capture
assemblies shown in Figures 10A–10F that all of the image capture
assembles could be mounted on.” PO Sur-Reply 4; id. at 3 (Patent Owner
disputing Petitioner’s contention ‘that the elements 12a–12d in these figures
are ‘image sensors mounted on different printed circuit boards’” and arguing
that May “expressly describes elements 12a–12d, as well as elements 14 and
16 as ‘image sensors.’”). There is insufficient evidence of record that would
tend to support a finding that a POSITA would have understood May’s
image sensors 12a through 12d to be mounted in a planar fashion to separate
printed circuit boards. At most, Petitioner explains that “a POSITA would
have understood that the image sensors being in different planes in May’s
embodiments shows that the image sensor on each subassembly is mounted
on its own PCB.” Pet. Reply 9 (citing Ex. 1003 ¶¶ 66–67, 86; Ex. 1005,
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Figs. 15A–15C, 16A–16B, 23:28–40; Ex. 1011, Figs. 10D-10F) (emphasis
added). Dr. Sasián does not explain why image sensors situated in different
planes would have been understood to have a particular, e.g., planar,
alignment with respect to a printed circuit board. See, e.g., Ex. 1003, p. 93
(citing Ex. 1005, 23:44–50); id. ¶¶ 67, 74 (citing Ex. 1005, Figs. 16A–16B,
23:28–40; Ex. 1011, Figs. 24A–24B, 23:48–57).
With respect to May’s disclosure that “[w]hile not in an exactly
coaxial arrangement with respect to each other, the multiple lenses and
sensors are generally aligned with respect to each other so as to be viewing
substantially the same object, albeit with different fields of view,” Petitioner
has not sufficiently explained why May’s “generally aligned” lens
assemblies, including image sensors, would have been understood to involve
mounting the multiple lenses and sensors in a planar fashion which, in turn,
would have been understood to lead to separate printed circuit boards. Ex.
1011, 6:26–30 (emphasis added); see e.g., Tr. 13:11–16, 25:7–10.
Analysis of Whether a POSITA Would Have Understood
May or Parulski’s flex connectors to Teach or Suggest
Connecting One Printed Circuit Board to Another
Dr. Sasián testifies that, like May, “Parulski includes a flex connector
626 and a POSITA would have understood that this may be used to similarly
connect different boards with lens units together” and thus, “a POSITA
would have understood that both Parulski and May teach mounting Wide
and Telephoto camera units on separate printed circuit boards.” Ex. 1003,
93 (Ex. 1005, 23:44–50). Dr. Sasián also testifies that “each of the camera
subassemblies of May is mounted on a substrate that also carries other
electronic components (e.g., an autofocus mechanism), including a flex
connector (626) and therefore is understood to be a printed circuit board as
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claimed.” Ex. 1003 ¶¶ 67, 74 (Ex. 1005, Figs. 16A–16B, 23:28–40; Ex.
1011, Figs. 24A–24B, 23:48–57) (emphasis added). But we are not
persuaded that Parulski’s flex connector or May’s flex connector would have
been understood to connect to another printed circuit board with the other
type (Wide or Tele) of lens unit.
There is nothing in May or Dr. Sasián’s testimony that indicates why
a POSITA would have understood either Parulski’s or May’s flex connector
to connect to another printed circuit board instead of, for example, “some
other electronics.” Cf. Tr. 21:15–18. Neither does May or Dr. Sasián’s
testimony explain why a POSITA would not have, instead, understood
image sensors 12a through 12d could be connected, e.g., in a non-planar
fashion, to a single printed circuit board that is parallel to fixed focal length
lenses 2a through 2d via, for example, wires, “flex connectors or by some
other electronics.” Id. at 20:18–21:2 (Petitioner’s counsel arguing that
separate printed circuit boards would be connected by flex connectors or
other electronics). Petitioner’s citation to Ryu does not support Petitioner’s
position any further because the cited disclosure teaches “[a]n image sensor
(not shown) is connected to one end of the upper surface of the PCB [printed
circuit board] 12 by wire, and the header connector 14.” Ex. 1012, 1:34–36.
We are also not persuaded by Petitioner’s citation to May’s Figure 17
because that figure shows only one image sensor and does not explain how
and why any component of the figure would have been understood to teach
or suggest a printed circuit board. See PO Sur-Reply 6 (arguing that “May
never says what these unlabeled structures [in Figure 17] are, and there is
nothing in May to indicate that these are printed circuit boards, as opposed
to some sort of connector, cable, or structural component”).
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For the reasons discussed above, we determine that Petitioner fails to
establish unpatentability of claim 3, and claim 4 which depends therefrom,
by a preponderance of the evidence because Petitioner’s challenge does not
sufficiently show that the combination of Parulski, Huang, Tang, and May,
as evidenced by Ryu, teaches or suggests that “the Wide and Telephoto
camera units are mounted on separate printed circuit boards.”
Petitioner’s challenge does not succeed for an additional reason––its
rationale for combining May with Parulski, Huang, and Tang is not
supported by sufficient rational underpinning, as discussed in detail below.
Analysis of Rationale for Combining May with Parulski,
Huang, and Tang
Petitioner’s reasons for combining May with Parulski, Huang, and
Tang are too generic and factually unsupported. See ActiveVideo Networks,
Inc. v. Verizon Communications, Inc. 694 F.3d 1312, 1328 (finding expert
testimony about the “modular” nature of references “generic and bear[ing]
no relation to any specific combination of prior art elements”). As discussed
in further detail below, Petitioner’s reasoning “say[s] no more than that a
skilled artisan, once presented with the two references, would have
understood that they could be combined. And that is not enough; it does not
imply a motivation to pick out those two references and combine them to
arrive at the claimed invention.” Pers. Web Techs., LLC v. Apple, Inc., 848
F.3d 987, 993–94 (Fed. Cir. 2017). “[O]bviousness concerns whether a
skilled artisan not only could have made but would have been motivated to
make the combinations or modifications of prior art to arrive at the claimed
invention.” Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir.
2015); see In re Nuvasive, 842 F.3d at 1383 (holding conclusory statements
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insufficient if not supported by a reasoned explanation) (citing In re Lee, 277
F.3d 1338, 1342 (Fed. Cir. 2002) (“The factual inquiry whether to combine
references must be thorough and searching.”)).
Petitioner cites Tang’s optical parameters to specify the dimensions of
a wide angle lens assembly. See Pet. 29–34. Likewise, Petitioner cites
Huang’s optical parameters to specify the dimensions of a telephoto lens
assembly. Id. at 29, 34–39. Petitioner contends that Tang’s wide optical
parameters specify a lens assembly having a track length that differs from a
lens assembly specified by Huang’s Tele optical parameters. Id. at 90
(arguing that a POSITA would have understood Tang’s Embodiment 1 lens
assembly and Huang’s Example 1 lens assembly to have different track
lengths and thus, “the image sensors would naturally be placed at different
planes”).
Petitioner’s combination turns to May to determine how to mount lens
units of differing track lengths. Pet. Reply 19 (“[I]n a camera incorporating
the lens designs of Huang and Tang (each with a different track length),
sensors would be placed at different distances from the lens,” a “POSITA
would look to May’s teachings of . . . having them on the same plane or
separate planes.”) (emphasis added). As Parulski, Huang, and Tang show
wide lens assemblies and tele lens in non-folded configurations, Petitioner
argues that “[a] POSITA would have been motivated to apply the teachings
of May in a non-folded configuration [Fig. 24A] . . . at least because these
lenses have non-folded layouts.” Id. at 20 (citing Ex. 1006, Table 1; Ex.
1009, Table 1; Ex. 1022 ¶ 30). Petitioner also relies on May’s folded
configurations from Figures 10D–10F because, as it asserts, “May’s modular
camera subassemblies (e.g., as shown in Figs. 10D-10F) to apply to both
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folded and non-folded fixed-lens configurations.” Id. (citing Pet. 95; Ex.
1003, 96; Ex. 1022 ¶ 30; Ex. 1011, 23:8–11).
We are not persuaded that a POSITA would have looked to May’s
folded configuration embodiments, given that May also discloses a non-
folded configuration embodiment and each of Parulski, Tang, and Huang
disclose non-folded configurations for their lens assemblies. Further, in
May’s non-folded embodiment depicted in Figure 24A, reproduced below,
May shows both a wide angle lens and telephoto lens on a single substrate
620.
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Petitioner’s Reasons Related to Modularity and Improvements
in Cost, Size, and Optical Performance
We further determine that the record does not indicate that May is any
more “modular” than any other lens assembly in the cited references. See
ActiveVideo Networks, 694 F.3d at 1328. None of the lens assemblies in the
cited references appear to share any elements with other lens assemblies and
appear to be able to perform imaging independently of other lens assemblies
and as such, are modular to the same extent May can be considered to be
modular. Even if May does describe modularity in connection with its
invention, that does not imply a POSITA would have understood its
components to be interchangeable or any more capable of being rearranged
than any other lens assembly in the cited references. Also, there is
insufficient evidence of record to support a finding that May teaches the
desirability of rearranging its camera subassemblies––particularly in light of
May’s teaching, and Petitioner’s recognition, that “May gives specific
reasons for the alignment of its subassemblies (as shown in the above
figures), teaching that ‘multiple lenses and sensors are generally aligned
with respect to each other so as to be viewing substantially the same object,
albeit with different fields of view.’” Pet. Reply 23 (citing Ex. 1011, 6:28–
30). We find that Patent Owner has the better position––that “[t]he Petition
has no discussion of camera subassemblies that can be ‘reconfigured,’
‘rearranged’ or swapped as if they were LEGO bricks.” PO Sur-Reply 9
(citing Pet. Reply 12, 17). At best, May states that “the spatial relationship
of the components has been rearranged” in the examples shown in Figures
14A–14C. In other words, May states that it discloses different
arrangements of subassemblies, but May does not indicate that camera
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subassemblies can be readily ‘rearranged’ in a modular fashion during
design or in a finished device or that such “modular” rearrangement would
be desirable or any easier to do for May’s subassembly than it would be with
the lens assemblies in the cited references. Ex. 1011, 9:54–59.
Even assuming, arguendo, that May teaches rearranging electronic
components, there is insufficient evidence supporting Petitioner’s assertion
that it is due to any “modular” quality of May’s invention. We disagree that
camera assemblies that are modular, a term that could be used to describe
any camera assembly and not just May’s, would have conveyed to a
POSITA anything about a camera assembly’s mounting and connection to a
printed circuit board, either a shared printed circuit board or its own,
separate printed circuit board. The record does not contain specific evidence
that would support a finding that placing image sensors on separate printed
circuit boards would make May’s camera assemblies more able to be
rearranged or interchanged as compared with mounting them, in some non-
planar fashion, on a shared printed circuit board.
There is insufficient evidence of record that would tend to support a
finding that placing wide-angle and telephoto lenses on separate printed
circuit boards would “optimize” them for their specific purposes any more
than aligning them on the same plane on a shared printed circuit board,
contrary to Petitioner’s contentions. Pet. Reply 17 (citing Pet. 90). In this
regard, Petitioner cites multiple portions of May in columns 4, 6, 9, and 10.
In the cited portions, May states its objective to reduce the size and cost of
its camera and produce higher-quality optical results. In a cited portion in
column 6, May even states that the improvements in the cost, size, and
optical performance of its dual-lens camera are relative to a camera having a
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single sensor, and a large zoom lens. See Ex. 1011, 6:20–26. None of the
statements in May suggest that any improvements in cost, size, or optical
performance result from having a separate printed circuit board for each
camera subassembly, which is what Petitioner relies on May to teach in its
combination. See also Ex. 1005, 10:17–25 (Parulski generally describing a
desire to reduce cost and size of a camera assembly). Also, there is
insufficient evidence of record that would tend to support a finding that
placing May’s different camera subassemblies on separate printed circuit
boards would improve or increase the range of optical performance of its
camera assemblies, as Petitioner contends. See Pet. 88–90, 93.
As such, we are not persuaded that “[a] POSITA would look to May’s
teachings of alternative ways of assembling those camera modules,
including having them on the same plane or separate planes.” See Pet. Reply
(Ex. 1022 ¶ 29) (emphasis omitted).
As discussed above, Dr. Sasián’s testimony in his First and Second
Declarations largely reiterates Petitioner’s contentions and cites to
substantially similar portions of the references. See e.g., Ex. 1003 ¶¶ 70–77;
Ex. 1024 ¶¶ 26–31. As such, we find his testimony similarly unpersuasive.
For the foregoing reasons, we are not persuaded that Petitioner’s
rationale for combining May with Parulski, Huang, and Tang is supported by
sufficient rational underpinning. Accordingly, for this additional reason, we
conclude that Petitioner does not establish unpatentability of claim 3 or
claim 4, which depends from claim 3, by a preponderance of the evidence.
F. Obviousness over Parulski, Huang, Tang, and Li II
Petitioner contends that claim 6, which depends directly from claim 1,
is unpatentable as obvious under 35 U.S.C. § 103 over Parulski, Huang,
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Tang, and Li II. Patent Owner did not dispute Petitioner’s challenge to
claim 6. See PO Resp. 1. For the reasons that follow, we determine that
Petitioner’s showing is sufficiently supported so as establish unpatentability
of claim 6 by a preponderance of the evidence.
1. Overview of Li II
Li II concerns a mobile device with dual digital camera sensors. Ex.
1018, 1:7–8. Sensor position controller of the mobile device 106 “may
adjust locations and/or positions of the two sensors 102, 104, such as [by]
rotating, shifting or sliding the sensors 102,104 in one or more directions.”
Id. at 3:9–12. A mobile device with sensors is depicted in Figure 1,
reproduced below.
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Figure 1 of Li II illustrates a mobile device with two or more
camera sensors. Id. at 1:36–37.
Li II explains “[a]djustable sensors 102, 104 may enable a number of
advanced features, such as image quality improvement, 3-D image and video
visualization, and 360-degree panoramic video generation.” Id. at 3:16–19.
2. Dependent Claim 6
Dependent claim 6 recites, “wherein the Wide and Telephoto camera
units are spaced from one another a distance d of about 1 mm.” Ex. 1001,
20:30–32.
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Petitioner contends that Li II discloses “a mobile device with dual
digital camera sensors [102, 104]” that “are adjustable by ‘rotating, shifting
or sliding the sensors 102, 104 in one or more directions.’” Pet. 100 (citing
Ex. 1018, 1:7–8, 3:7–12, Fig. 1). According to Petitioner, “Li II states that
the sensors may be adjusted to a range including 6 cm apart as well as closer
together, such that ‘the distance between the two sensors 102, 104
approaches zero.’” Id. at 101 (citing Ex. 1018, 4:2–5, 4:56–57). Petitioner
further contends that “[a] POSITA would have understood that this range
includes ‘a distance d of about 1 mm’ as claimed, especially in the context of
Li II’s discussion of sensors ‘positioned very close to each other,’ and
considering the sizes of camera units.” Id. (citing Ex. 1018, 3:66–4:13).
As rationale for combining the teachings of Parulski, Huang, Tang,
and Li II, Petitioner contends
[A] POSITA would have been motivated to modify Parulski’s
mobile device with Li II’s method of varying the distance
between imaging lenses to provide additional control over the
imaging capabilities of the mobile device including increasing
image dynamic range. For example, Parulski includes various
embodiments with different spacing between lenses including a
first embodiment that includes a first zoom imaging stage and a
second imaging stage “for the purpose of autofocus of the first
imaging stage.” In a second embodiment, “two image capture
stages are used together to form a high resolution rangefinder
similar to a dual lens rangefinder but with higher resolution,
which is provided by the two high resolution image capture
stages and a larger separation distance between the two lenses in
the two image capture stages.”
Id. at 98 (citing Ex. 1003, 99, Ex. 1005, 10:26–37, 59–64; Ex. 1018, 4:12–
36).
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Patent Owner does not dispute Petitioner’s showing as to this claim.
See generally PO Resp.
We have reviewed Petitioner’s cited evidence and are persuaded that
the rationale for combining is supported by sufficient rational underpinning
and that the cited evidence sufficiently supports Petitioner’s contentions so
as to establish unpatentability by a preponderance of the evidence with
respect to the challenge to dependent claim 6 over the combination of
Parulski, Huang, Tang, and Li II. See Pet. 95–104.
IV. CONCLUSION
We conclude that Petitioner has established unpatentability by a
preponderance of the evidence with respect to its challenge to claims 1, 2, 5–
7, 11–13, 15, 16, 18, 20, and 21 over Parulski, Huang, and Tang and with
respect to its challenge to claim 6 over Parulski, Huang, Tang, and Li II. We
further conclude that Petitioner has not established unpatentability by a
preponderance of the evidence with respect to its challenge to claims 3 and 4
over Parulski, Huang, Tang, and May.
Our conclusions regarding the challenged claims are summarized
below:
Claims
Challenged
35
U.S.C. §
References/
Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1, 2, 5, 7,
11–13, 15,
16, 18, 20,
21
103(a) Parulski, Huang, Tang
1, 2, 5, 7, 11–
13, 15, 16, 18,
20, 21

6 103(a)
Parulski,
Huang, Tang,
Li II
6
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Claims
Challenged
35
U.S.C. §
References/
Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
3, 4 103(a)
Parulski,
Huang, Tang,
May
3, 4
Overall
Outcome
1, 2, 5–7, 11–
13, 15, 16, 18,
20, 21
3, 4

V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 2, 5–7, 11–13, 15, 16, 18, 20, and 21 are
determined to be unpatentable;
ORDERED that claims 3 and 4 are determined to be not unpatentable;
and
FURTHER ORDERED that, because this a Final Written Decision,
parties to this proceeding seeking judicial review of this Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

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

For PATENT OWNER:

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