Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 31
`
` Entered: October 29, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS LTD.,
`Patent Owner.
`____________
`
`Case IPR2018-01140
`Patent 9,402,032 B2
`____________
`
`
`Before MARC S. HOFF, BRYAN MOORE, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`HOFF, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`571-272-7822
`
`
` Paper No. 31
`
` Entered: October 29, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS LTD.,
`Patent Owner.
`____________
`
`Case IPR2018-01140
`Patent 9,402,032 B2
`____________
`
`
`Before MARC S. HOFF, BRYAN MOORE, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`HOFF, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2018-01140
`Patent 9,402,032 B2
`
`
`BACKGROUND
`I.
`Petitioner requested inter partes review of claims 1 and 13-15 (the
`
`“challenged claims”) of U.S. Patent No. 9,402,032 B2 (Ex. 1001, “the ’712
`patent”). Paper 2 (“Petition” or “Pet.”). We instituted review as to all
`claims and all grounds challenged in the Petition. Paper 10 (“Decision” or
`“Dec.”). Patent Owner filed a Patent Owner’s Response. Paper 14 (“PO
`Resp.”). Petitioner thereafter filed a Petitioner’s Reply. Paper 22 (“Reply”).
`Patent Owner filed a Sur-Reply to Petitioner’s Reply. Paper 24 (“PO Sur-
`Reply”). Oral arguments were heard on October 8, 2019.
`CONSTRUCTION OF “TOTAL TRACK LENGTH”
`II.
`With respect to the construction of the term “total track length”
`(TTL), Petitioner contends that the meaning of the term “total track length
`(TTL)” should include “the length of the optical axis spacing between the
`object-side surface of the first lens element and the image plane.” Pet. 9.
`Petitioner relies on the ’032 patent disclosure that “the electronic sensor or
`image sensor ‘is disposed at image plane 114 for the image formation.’”
`Pet. 9 (quoting Ex. 1001, 3:14–16). Petitioner further contends that the
`electronic sensor is not shown in the figures of the ’032 patent and TTL is
`defined in terms of the image plane. Reply 6 (quoting Ex. 1001, 3:13–15,
`5:10–11, 6:27–28). Petitioner also supports its construction of TTL with
`Chen (Ex. 1008), which states that “TTL is defined as the on-axis spacing
`between the object-side surface of the first lens element and the image plane
`when the first lens element is positioned closest to the imaged object.” Pet.
`9 (quoting Ex. 1008, 3:24–26). Patent Owner did not suggest a construction
`for this term prior to institution because it did not file a Preliminary
`Response.
`
`2
`
`
`
`IPR2018-01140
`Patent 9,402,032 B2
`
`
`At institution, we preliminarily concluded that TTL should be
`construed as “the length of the optical axis spacing between the object-side
`surface of the first lens element and the image plane.” Dec. 11.
`Patent Owner contends that the disclosure in the ’032 patent of “the
`total track length on an optical axis between the object-side surface of the
`first lens element and the electronic sensor is marked ‘TTL’” constitutes an
`express definition. PO Resp. 17 (quoting Ex. 1001, 1:60–63). Patent Owner
`further contends that extrinsic evidence, Exhibits 2004, 2005, 2006, and
`2007, each define TTL in terms of the electronic sensor as opposed to the
`image plane. Id. at 17–18.
`
`Patent Owner suggested at the hearing that the image plane or the
`physical surface of the imaging device are both legitimate ways to construe
`TTL1. Additionally, at the hearing, Patent Owner suggested that TTL does
`not have to be measured to an electronic sensor, but rather that TTL can be
`measured to the physical surface of the imaging device whether it be an
`electronic sensor, sensor film or otherwise.
`We reviewed the briefing from the parties and determine that the
`briefing on this issue is insufficient given discussion regarding this claim
`limitation at the oral hearing. We invite the parties to provide their
`respective positions on whether TTL should be construed as “the length of
`the optical axis spacing between the object-side surface of the first lens
`element and one of: an electronic sensor, a film sensor, and an image plane
`
`
`1 The oral hearing transcript is not available at the time of this order.
`Nevertheless, given the schedule to enter the Final Written Decision, we
`characterize the comments at the hearing in order to clarify what is requested
`in this order.
`
`3
`
`
`
`IPR2018-01140
`Patent 9,402,032 B2
`
`corresponding to either the electronic sensor or a film sensor,” in light of
`Patent Owner’s position taken during oral argument, and in light of the
`conflicting extrinsic definitions cited by the parties (Ex. 1008, 2004, 2005,
`2006, and 2007). The parties may address this issue and the issue below in a
`brief and responsive brief, as outlined in the orders at the conclusion of this
`paper. No new evidence or testimony may be attached to the briefs.
`
`
`III. CONCLUSION
`
`
`Accordingly, it is,
`ORDERED that Petitioner and Patent Owner each file briefs, limited
`to 2100 words or less, addressing claim construction and enablement issues
`discussed above on or before November 5, 2019. No new evidence or
`testimony may be attached to the briefs; and
`FURTHER ORDERED that Petitioner and Patent Owner file
`responsive briefs, limited to 1500 words or less, addressing the other parties’
`arguments on or before November 12, 2019. No new evidence or testimony
`may be attached to the briefs.
`
`4
`
`
`
`IPR2018-01140
`Patent 9,402,032 B2
`
`
`
`For PETITIONER:
`Michael S. Parsons
`Andrew S. Ehmke
`Jordan Maucotel
`Philip Woo
`David OBrien
`HAYNES AND BOONE, LLP
`michael.parsons.ipr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
`jordan.maucotel@haynesboone.com
`philip.woo.ipr@haynesboone.com
`david.obrien.ipr@haynesboone.com
`
`For PATENT OWNER:
`Neil A. Rubin
`C. Jay Chung
`Reza Mirzaie
`RUSS AUGUST & KABAT
`nrubin@raklaw.com
`jchung@raklaw.com
`rmirzaie@raklaw.com
`
`
`5
`
`
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