Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 37
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`Date: December 3, 2019
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS LTD.,
`Patent Owner.
`____________
`
`IPR2018-01140
`Patent 9,402,032 B2
`____________
`
`
`
`Before MARC S. HOFF, BRYAN MOORE, and MONICA ULLAGADDI,
`Administrative Patent Judges.
`
`HOFF, Administrative Patent Judge.
`
`
`
`
`DECISION
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`571-272-7822
`
`
`
`
`Paper 37
`
`Date: December 3, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS LTD.,
`Patent Owner.
`____________
`
`IPR2018-01140
`Patent 9,402,032 B2
`____________
`
`
`
`Before MARC S. HOFF, BRYAN MOORE, and MONICA ULLAGADDI,
`Administrative Patent Judges.
`
`HOFF, Administrative Patent Judge.
`
`
`
`
`DECISION
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`IPR2018-01140
`Patent 9,402,032 B2
`
`
`I.
`
`INTRODUCTION
`
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`
`§ 6(b), and this Final Written Decision is issued pursuant to 35 U.S.C.
`
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we determine
`
`that Petitioner has shown by a preponderance of the evidence that claims 1,
`
`13, 14, and 15 (“challenged claims”) of U.S. Patent No. 9,402,032 B2 (Ex.
`
`1001, “the ’032 Patent”) are unpatentable.
`
`
`
`Procedural History
`
`Apple Inc. (“Petitioner”) requested an inter partes review of claims 1
`
`and 13–15 (the “Challenged Claims”) of U.S. Patent No. 9,402,032 B2 (Ex.
`
`1001, “the ’032 Patent”). Paper 2 (“Petition” or “Pet.”).
`
`After we instituted trial on the challenged claims (Paper 10,
`
`“Institution Decision” or “Decision on Institution”), Corephotonics Ltd.
`
`(“Patent Owner”) filed a Response. Paper 14 (“PO Response” or “PO
`
`Resp.”). Petitioner filed a Reply to Patent Owner’s Response (Paper 22,
`
`“Reply”), and Patent Owner filed a Sur-Reply to Petitioner’s Reply (Paper
`
`24, “Sur-Reply” or “PO Sur-Reply”).
`
`An oral argument was held on October 8, 2019. A transcript of the
`
`oral argument is included in the record. Paper 32 (“Tr.”).
`
`The Board invited additional briefing from the parties on the question
`
`of the construction of the claim term “total track length” (Paper 31,
`
`“Order”). In response, Petitioner and Patent Owner filed responsive briefs
`
`(Petitioner: Paper 33, “Pet. Resp. Br.;” Patent Owner: Paper 34, “PO Resp.
`
`Br.”). Subsequently, Petitioner and Patent Owner filed respective replies to
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`2
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`IPR2018-01140
`Patent 9,402,032 B2
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`those responsive briefs (Petitioner: Paper 35, “Pet. Suppl. Reply;” Patent
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`Owner: Paper 36, “PO Suppl. Resp.”).
`
`Petitioner relies on a declaration from Dr. José Sasián. Ex. 1003.
`
`Patent Owner relies on a declaration from Duncan Moore, Ph.D. Ex. 2013.
`
`
`
`Related Proceedings
`
`The ’032 Patent is asserted in litigation by Patent Owner in
`
`Corephotonics, Ltd. v. Apple Inc., 5-17-cv-06457 (N.D. Cal.). Pet. 2; Ex.
`
`2007.
`
`
`
`This proceeding is also related to IPR2018-01146, requested by
`
`Petitioner Apple Inc., seeking review of U.S. Patent No. 9,568,712. Both
`
`patents for which review is requested are continuations (in a chain of
`
`continuity) from PCT/IB2014/062465.
`
`
`
`II.
`
`BACKGROUND
`
`A.
`
`The ’032 Patent (Ex. 1001)
`
`The ’032 Patent concerns an optical lens assembly with five lens
`
`elements. Ex. 1001, code (57). Ex. 1001, 7:31–33. The ’032 patent issued
`
`on July 26, 2016, based upon an application filed November 4, 2015,
`
`ultimately claiming priority to a provisional application filed July 4, 2013.1
`
`Figure 1A of the ’032 Patent is reproduced below:
`
`
`1 Because the effective filing date of this patent is March 16, 2013 or later,
`post-AIA § 103 applies to this proceeding.
`
`3
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`IPR2018-01140
`Patent 9,402,032 B2
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`Figure 1A of the ’032 Patent shows a first embodiment of its optical
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`lens system. Ex. 1001, Figure 1A.
`
`In order from an object side to an image side, the lens assembly
`
`comprises a first lens element (102) with positive refractive power having a
`
`convex object side surface; a second lens element (104) with negative
`
`refractive power having a thickness d2 on an optical axis and separated from
`
`the first lens element by a first air gap; a third lens element (106) with
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`negative refractive power and separated from the second lens element by a
`
`second air gap; a fourth lens element (108) having a positive refractive
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`power and separated from the third lens element by a third air gap; and a
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`fifth lens element (110) having a negative refractive power, separated from
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`4
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`IPR2018-01140
`Patent 9,402,032 B2
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`the fourth lens element by a fourth air gap, the fifth lens element having a
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`thickness d5 on the optical axis. Id. at 1:44–54, 2:61–3:7. An image sensor
`
`(not shown) is disposed at the image plane (114) for the image formation. Id.
`
`at 3:13–15.
`
`The lens system of the ’032 Patent has an effective focal length
`
`(EFL), and a total track length (TTL) on an optical axis between the object-
`
`side surface of the first lens element and the image sensor. Id. at 1:60–63.
`
`In all embodiments of the ’032 Patent, the TTL/EFL ratio is smaller than
`
`1.0. Id. at 1:63–65.
`
`
`
`B.
`
`Challenged Claims
`
`Claim 1 is independent. Claims 13–15 depend from claim 1. Claim 1
`
`is reproduced below:
`
`1. A lens assembly, comprising: a plurality of refractive lens
`elements arranged along an optical axis, wherein at least one
`surface of at least one of the plurality of lens elements is
`aspheric, wherein the lens assembly has an effective focal
`length (EFL), and wherein the lens assembly has a total track
`length (TTL) of 6.5 millimeters or less and a ratio TTL/EFL
`of less than 1.0, wherein the plurality of lens elements
`comprises, in order from an object side to an image side, a first
`lens element with positive refractive power and a second lens
`element with negative refractive power, wherein a focal
`length f1 of the first lens element is smaller than TTL/2.
`
`
`Ex. 1001, 7:43–53.
`
`C.
`
`Evidence Relied Upon
`
`Petitioner relies on the following references. Pet. 11-16, 34-46.
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`5
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`
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`IPR2018-01140
`Patent 9,402,032 B2
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`
`Name
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`Ogino
`
`Chen II
`
`
`
`D.
`
`Reference
`
`US Patent No 9,128,267 B2, filed Mar. 26, 2014,
`issued Sep. 8, 2015
`US Patent No. 8,233,224 B2, filed Jan. 8, 2010,
`issued Jul. 31, 2012
`
`Exhibit
`
`1005
`
`1009
`
`Instituted Grounds of Unpatentability
`
`We instituted inter partes review of claims 1, 13, 14, and 15 of the
`
`’032 Patent according to the following grounds of unpatentability:
`
`
`
`Claims Challenged 35 U.S.C. §
`1, 13
`§ 102
`14, 15
`§ 103
`
`
`Reference(s)
`
`Ogino
`Ogino and Chen II
`
`III. ANALYSIS
`
`A. Overview of Asserted Reference Ogino
`
`U.S. Patent No. 9,128,267 to Ogino issued on September 8, 2015,
`
`based upon an application filed March 26, 2014. Ex. 1005, code (45), code
`
`(22). Ogino qualifies as prior art under 35 U.S.C. § 102(a)(2) due to its
`
`claim of foreign priority based upon a Japanese application filed March 29,
`
`2013.
`
`Ogino relates to an imaging lens substantially consisting of, in order
`
`from an object side, five lenses: a first lens (L1) that has a positive refractive
`
`power and has a meniscus shape which is convex toward the object side; a
`
`second lens (L2) that has a biconcave shape; a third lens (L3) that has a
`
`meniscus shape which is convex toward the object side; a fourth lens (L4)
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`that has a meniscus shape which is convex toward an object side; and a fifth
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`lens (L5) that has a negative refractive power and has at least one inflection
`
`6
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`IPR2018-01140
`Patent 9,402,032 B2
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`point on an image side surface. See Ex. 1005, 2:4–13. Figure 6 of Ogino is
`
`reproduced below.
`
`Figure 6 is a lens cross-sectional view illustrating a configuration
`
`example of an imaging lens according to an embodiment of the invention.
`
`
`
`See id. at 4:9–11.
`
`B. Overview of Asserted Reference Chen II
`
`U.S. Patent 8, 233,224 to Chen II issued on July 31, 2012, based upon
`
`an application filed January 8, 2010. Ex. 1009, code (45), code (22).
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`7
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`IPR2018-01140
`Patent 9,402,032 B2
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`Chen II concerns an imaging lens system including, in order from the
`
`object side to the image side: a first lens element (100) with positive
`
`refractive power having a convex object-side surface; a second lens element
`
`(110) with negative refractive power; a third lens element (120) having a
`
`concave image-side surface; a fourth lens element (130) with positive
`
`refractive power; a fifth lens element (140) with negative refractive power
`
`having a concave image-side surface, at least one surface thereof being
`
`provided with at least one inflection point. Ex. 1009, 1:36–43.
`
`Figure 1 of Chen II is reproduced below:
`
`
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`8
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`IPR2018-01140
`Patent 9,402,032 B2
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`Figure 1 of Chen II shows an imaging lens system in accordance with
`
`a first embodiment of the invention. Ex. 1009, 2:44–45.
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`C.
`
`Claim Construction
`
`Consistent with the statute and legislative history of the Leahy-Smith
`
`America Invents Act,2 for a Petition filed before November 13, 2018, claims
`
`of an unexpired patent that will not expire before issuance of a final written
`
`decision are interpreted using the broadest reasonable interpretation in light
`
`of the specification. See Trial Practice Guide, 77 Fed. Reg. at 48,766; 37
`
`C.F.R. § 42.100(b) (2017); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`
`2131, 2144–46 (2016). Although the ’032 patent’s expiration date is not
`
`mentioned by either party, we note that the ’032 patent issued from an
`
`application filed November 4, 2015, and is a continuation of a chain of
`
`applications, the oldest of which was filed July 4, 2013. Ex. 1001, code
`
`(63), code (60). Accordingly, the ’032 patent is not scheduled to expire
`
`before the expected issuance of a final written decision in this review. See
`
`35 U.S.C. § 154(a)(2). Thus, we apply the broadest reasonable construction
`
`standard. See Cuozzo, 136 S. Ct. at 2144-46.
`
`Under the broadest reasonable construction standard, claim terms
`
`generally are given their ordinary and customary meaning, as would be
`
`understood by one of ordinary skill in the art in the context of the entire
`
`disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007). The claims, however, “‘should always be read in light of the
`
`specification and teachings in the underlying patent,’” and “[e]ven under the
`
`broadest reasonable interpretation, the Board’s construction ‘cannot be
`
`divorced from the specification and the record evidence.’” Microsoft Corp.
`
`
`2 Pub. L. No. 112-29,125 Stat. 284 (2011).
`
`9
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`IPR2018-01140
`Patent 9,402,032 B2
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`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (citations omitted).
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`Further, any special definition for a claim term must be set forth in the
`
`specification with reasonable clarity, deliberateness, and precision. See In re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
`
`definition, limitations are not to be read from the specification into the
`
`claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`We address below Petitioner’s and Patent Owner’s proposed
`
`construction of the terms “effective focal length” and “total track length” in
`
`the context of claims 1 and 13–15.
`
`Effective Focal Length (EFL)
`
`Petitioner asserts that while the specification of the ’032 Patent does
`
`not offer an express definition for the term “effective focal length,” “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 [(]EFL).” Pet. 9–10 (internal parentheses omitted); Ex.
`
`1007, 2:59–61. Patent Owner, in response, does not dispute Petitioner’s
`
`construction of “effective focal length,” stating that the Petition does not
`
`turn on the construction of the term. PO Resp. 20.
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`Having reviewed the evidence of record, we agree with Petitioner that
`
`Li supports construing the term “effective focal length” as “the focal length
`
`of a lens assembly.” We adopt this construction.
`
`Total Track Length (TTL)
`
`Petitioner’s expert, Dr. Sasián, states that the specification of the ’032
`
`patent discloses that TTL is the “total track length on an optical axis between
`
`the object-side surface of the first lens element and the electronic sensor.”
`
`Ex. 1003 ¶ 39; Ex. 1001, 1:61–63. The electronic sensor or image sensor “is
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`10
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`Patent 9,402,032 B2
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`disposed at the image plane 114 for the image formation.” Ex. 1003 ¶ 39;
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`Ex.1001, 3:13–15. According to Dr. Sasián, this is consistent with other
`
`examples in the art. Ex. 1003 ¶ 39. For instance, Chen I (Ex. 1008) 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.” Id.; Ex. 1008, 3:24–26.
`
`In the specification of the ’032 Patent, the TTL of each lens
`
`systemembodiment can be determined by summing the widths of lens
`
`elements andspacing between lens elements of the lens system from the
`
`object side of the first lens to the image plane. Ex. 1003 ¶ 40; see, e.g., Ex.
`
`1001, Table 1, Table 3, Table 5.
`
`Patent Owner argues in the Response that the ’032 Patent expressly
`
`defines TTL as the distance “on an optical axis between the object-side
`
`surface of the first lens element and the electronic sensor.” PO Resp. 14; Ex.
`
`1001, 1:60-63. Patent Owner thus contends that this “definition” “takes into
`
`account all of the elements of the lens system.” Id. at 15 (quoting Ex. 2013 ¶
`
`51). More particularly, Patent Owner contends that “[t]he ’032 patent
`
`expressly instructs that if a lens system includes the lens elements as well as,
`
`for example, a glass window element, the ’032 patent states that it should be
`
`included in the measurement of TTL when comparing the system to the ’032
`
`patent’s claims.” Id. (citing Ex. 1001, 1:55–59). With respect to extrinsic
`
`evidence, Patent Owner contends that Chen “provides its own express
`
`definition of ‘image plane.’” PO Resp. 17 (citing Ex. 1008). Patent Owner
`
`asserts that Chen’s definition of “image plane” is a “different definition
`
`worded differently from what Petitioner proposes: ‘TTL is defined as the on-
`
`axis spacing between the object-side surface of the first lens element and the
`
`11
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`IPR2018-01140
`Patent 9,402,032 B2
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`image plane when the first lens element is positioned closest to the imaged
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`object.’” Id. (quoting Ex.1008, 3:24–26). Patent Owner, instead, urges us to
`
`look to what it considers intrinsic evidence, Tang (Ex. 2004), a reference
`
`cited in the ’032 patent. Id. According to Patent Owner, Chen “defines TTL
`
`the same way as the ’032 patent: ‘a distance on the optical axis between the
`
`object-side surface of the first lens element and the electronic sensor is
`
`TTL.’” Id. (quoting Ex. 2004, 2:20–23). Patent Owner further urges us to
`
`consider other extrinsic evidence defining “TTL,” all of which, according to
`
`Patent Owner, defines “TTL” in the same manner as the ’032 patent. Id. at
`
`18 (citing Exs. 2005, 2006, 2007).
`
`Petitioner, in the Reply, argues that the Board should maintain the
`
`construction adopted in the Decision to Institute, i.e., “the length of the
`
`optical axis spacing between the object-side surface of the first lens element
`
`and the image plane.” Reply 5. Petitioner relies on intrinsic evidence in the
`
`’032 Patent, defining the total track length to the image plane, rather than the
`
`extrinsic evidence cited by Patent Owner defining the total track length to
`
`an image sensor or electronic sensor. Compare Ex.1001, 3:13–15, with
`
`Exhibits 2004, 2005, 2006, and 2007). Column 3 of the ’032 Patent refers to
`
`an optical lens system with an optional glass window “disposed between the
`
`image side surface 110b of fifth lens element 110 and an image plane 114
`
`for image formation of an object. Moreover, an image sensor (not shown) is
`
`disposed at image plane 114 for the image formation.” Ex. 1001, 3:12–13.
`
`Column 5 of the ’032 Patent refers to “an image plane 214 for image
`
`formation of an object.” Ex. 1001, 5:10–11. Column 6 of the ’032 Patent
`
`refers to “an image plane 314 for image formation of an object.” Ex. 1001,
`
`12
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`IPR2018-01140
`Patent 9,402,032 B2
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`6:27–28. None of these disclosures in the ’032 Patent, however, make
`
`specific mention of the concept of “total track length.”
`
`Patent Owner contends in the Sur-Reply that the term “image plane”
`
`is subject to multiple definitions whose differences would materially affect
`
`the scope of the ’032 Patent’s claims. Sur-Reply 4. The proposed “express
`
`definition” uses “image plane” to refer to the physical surface of the
`
`electronic image sensor. Id. According to Patent Owner, the ’032 Patent uses
`
`“image plane” to refer to the physical surface of the electronic image sensor:
`
`“an image sensor with an image plane on which an image of the object is
`
`formed.” Sur-Reply 4; Ex. 1001 at 1:58–59. Patent Owner contends that
`
`Ogino uses the term in the same way: “image plane” is an “image formation
`
`surface” disposed on an “imaging device.” Sur-Reply 4; Ex. 1005, 5:53–54.
`
`Patent Owner argues that Petitioner and its expert, Dr. Sasian, use “image
`
`plane” to refer to an “ideal image plane” rather than the physical surface.
`
`Sur-Reply 5; Ex. 2016, 28:5–9.
`
`Patent Owner suggested at the hearing that the image plane or the
`
`physical surface of the imaging device are both legitimate ways to construe
`
`TTL. Order 3. The Board invited the parties to provide further briefing
`
`concerning 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 corresponding to
`
`either the electronic sensor or a film sensor,” in light of Patent Owner’s
`
`position during oral argument and in light of conflicting extrinsic definitions
`
`cited by the parties. Order 3–4. In an actual lens system, the image may be
`
`captured somewhere other than the ideal image plane, which introduces a
`
`defocus effect but, as noted by Dr. Sasian, may reduce other image
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`13
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`aberrations that improve overall image quality. Sur-Reply 6; Ex. 2016, 34:2–
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`16.
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`
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`Petitioner again argues in its Responsive Brief that neither the claims
`
`nor the specification require a sensor to be present in a lens assembly. Pet.
`
`Resp. Br. 1. Petitioner points out that the specification describes “an optical
`
`lens system incorporating the lens assembly [that] may further include . . . an
`
`image sensor.” Pet. Resp. Br. 2; Ex. 1001, 1:57–61. Nonetheless, Petitioner
`
`concedes that “construction of TTL is moot and the Board need not resolve
`
`it to find unpatentability in this proceeding,” because Ogino’s “Example 63
`
`expressly discloses a sensor (“imaging device 100”) placed at its image
`
`plane.” Pet. Resp. Br. 3; Ex. 1005, 5:42–44 (“The imaging device 100 is
`
`disposed at an image formation surface (image plane R14) of the imaging
`
`lens L.”). Petitioner points out that when the optional cover glass CG is
`
`removed, the image plane R14 is shifted toward the object side, which shifts
`
`the imaging device 100 disposed at image plane R14. Pet. Resp. Br. 4.
`
`Petitioner identifies Ogino’s teaching that removing the cover glass
`
`“reduce[s] the total length” of the lens system. Ex. 1005, 5:65–6:2.
`
`
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`Patent Owner, in its Responsive Brief, argues in favor of the Board’s
`
`proposed construction, as being consistent with the intrinsic and extrinsic
`
`evidence. PO Resp. Br. 2. According to Patent Owner, the Board’s proposed
`
`construction is said to be consistent with the ’032 Patent’s disclosure that
`
`total track length is the distance to the electronic sensor. Id.; Ex. 1001, 1:61–
`
`63. The Board’s proposed construction is also argued to be consistent with
`
`the extrinsic evidence exhibits, which define TTL as a distance on the
`
`
`3 Ogino Example 6 is illustrated in its Figure 6, reproduced supra.
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`14
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`optical axis between the object-side surface of the first lens element and the
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`electronic sensor.” PO Resp. Br. 3; Ex. 2004, 2:20–23; Ex. 2005, ¶ 8; Ex.
`
`2006, ¶ 9; Ex. 2007, ¶ 5.
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`
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`Petitioner reiterates in its supplemental responsive brief that the
`
`broadest reasonable construction of TTL, consistent with the description in
`
`the specification, does not require a sensor. Pet. Suppl. Reply, 2–4.
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`
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`Patent Owner, for its part, argues in its supplemental responsive brief
`
`that the Board’s proposed construction does not make an image sensor a
`
`required element of the claims. PO Suppl. Reply, 1.
`
`As both parties have noted, the ’032 patent discloses that “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’.” Ex. 1001, 1:60–63.
`
`With respect to the sensor, the ’032 patent further discloses “[a]n optical lens
`
`system incorporating the lens assembly may further include . . . an image
`
`sensor with an image plane on which an image of the object is formed.” Id.
`
`at 1:58–59 (emphasis added). The ’032 patent discloses that “[t]he optical
`
`lens system further comprises . . . an image plane 114 for image formation of
`
`an object,” and that “an image sensor (not shown) is disposed at image
`
`plane 114 for the image formation.” Id. at 3:10–15 (emphasis added). The
`
`figures of the ’032 Patent do not depict a sensor, nor is a sensor mentioned
`
`with respect to other disclosures of the image plane. See id. at 5:10–11
`
`(disclosing “an image plane 214 for image formation of an object” absent an
`
`accompanying senor), 6:27–28 (disclosing “an image plane 314 for image
`
`formation of an object” absent an accompanying sensor).
`
`We are not persuaded that the intrinsic evidence supports Petitioner’s
`
`construction, which encompasses a TTL measured with respect to an image
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`15
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`plane that is independent or absent a corresponding image sensor. Pet. Resp.
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`Br. 2–3. Some of the disclosures of image plane in the ’032 patent are
`
`accompanied by a disclosure of a sensor. See Ex. 1001, 1:58–62, 3:12–16.
`
`Nor are we persuaded that the extrinsic evidence cited by Petitioner
`
`supports Petitioner’s construction. Although Chen discloses that the TTL is
`
`defined with respect to “the image plane when the first lens element is
`
`positioned closest to the imaged object,” each embodiment of Chen
`
`discloses, either implicitly or explicitly, the image plane in conjunction with
`
`an image sensor. Ex. 1008, 3:24–26, 6:5–6 (disclosing “an image plane 170
`
`disposed behind the sensor cover glass 160” with respect to Chen’s first
`
`embodiment), 7:59–60 (disclosing “an image plane 370 disposed behind the
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`sensor cover glass 360” with respect to Chen’s second embodiment), 10:20–
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`21 (disclosing “the image plane 570 is provided with an electronic sensor on
`
`which an object is imaged” with respect to Chen’s third embodiment).
`
`With respect to Patent Owner’s contentions, we are not persuaded that
`
`the cited disclosure in column 1, lines 61 through 63 of the ’032 patent
`
`“‘clearly set[s] forth a definition of the disputed claim term’ other than its
`
`plain and ordinary meaning.” See Thorner v. Sony Computer Entertainment
`
`America LLC, 669 F.3d 1362, 1365 (quoting CCS Fitness, Inc. v. Brunswick
`
`Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). “We depart from the plain
`
`and ordinary meaning of claim terms based on the specification in only two
`
`instances: lexicography and disavowal.” Hill-Rom Servs., Inc. v. Stryker
`
`Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) (citing Thorner, 669 F.3d at
`
`1365). “‘To act as its own lexicographer, a patentee must clearly set forth a
`
`definition of the disputed claim term other than its plain and ordinary
`
`meaning’ and must ‘clearly express an intent to redefine the term.’” Id.
`
`16
`
`
`
`IPR2018-01140
`Patent 9,402,032 B2
`
`(citing Thorner, 669 F.3d at 1365). “Disavowal requires that ‘the
`
`specification [or prosecution history] make[ ] clear that the invention does
`
`not include a particular feature,’ . . . or is clearly limited to a particular form
`
`of the invention.” Id. at 1372 (internal citations omitted).
`
`In the present proceeding, the disclosure in column 1, lines 61 through
`
`63 of the ’032 Patent is not characterized in terms of the present invention.
`
`Ex. 1001, 1:61–63. Like in Hill-Rom, there is neither “disclaimer or
`
`lexicography” nor “words of manifest exclusion or restriction.” Hill-Rom,
`
`755 F.3d at 1372. More particularly, there is no disclosure “expressing the
`
`advantages, importance, or essentiality” of measuring TTL with respect to
`
`an electronic sensor as opposed to, for example, film. Id. Nor is there
`
`disclosure of “language of limitation or restriction” of the TTL with respect
`
`to the electronic sensor. Id. Stated differently, the ’032 Patent specification
`
`does not describe the invention as limited to a TTL measured with respect to
`
`only an electronic sensor.
`
`According to Patent Owner’s expert Dr. Moore, TTL would have been
`
`understood by one of ordinary skill in the art at the time of the invention to
`
`be the length along the optical axis from the object side surface of the first
`
`element to the image plane, e.g., to the film in a film camera, or to the
`
`electronic sensor in a digital camera. See PO Resp. 15, 16; Ex. 1025, 68:9–
`
`17 (Dr. Moore’s testimony concerning how a person of ordinary skill in the
`
`art would have understood TTL to be measured with respect to film for a
`
`camera), 66:21–67:3 (Dr. Moore’s testimony concerning how a person of
`
`ordinary skill in the art would have understood that TTL could have been
`
`measured prior to electronic sensors). Patent Owner’s evidence supports the
`
`finding that a person of ordinary skill in the art would have further
`
`17
`
`
`
`IPR2018-01140
`Patent 9,402,032 B2
`
`understood TTL to be measured with respect to an electronic sensor. See
`
`e.g., Ex. 2004, 2:20–22; Ex. 2005 ¶ 60; Ex. 2006 ¶ 51; Ex. 2007 ¶ 41. So
`
`too does Petitioner’s evidence, Chen. See e.g., Ex. 1008, 3:24–26, 10:20–
`
`21.
`
`In summary, it is Petitioner’s position that construction of TTL is
`
`moot and the Board need not resolve it to find unpatentability in this
`
`proceeding. Pet. Resp. Br. 3. It is Patent Owner’s position that the Board’s
`
`proposed construction is “consistent with the intrinsic and extrinsic
`
`evidence.” PO Resp. Br. 2. In the absence of a substantive dispute between
`
`the parties concerning the construction of TTL, then, and based on the ’032
`
`Patent specification and the extrinsic evidence discussed herein, we maintain
`
`our construction of the term “total track length (TTL),” as expressed in the
`
`Order, to be “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 corresponding to either the electronic sensor or a
`
`film sensor.” Order 3.
`
`D.
`
`Legal Standard for Anticipation
`
`“A rejection for anticipation under section 102 requires that each and
`
`every limitation of the claimed invention be disclosed in a single prior art
`
`reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)
`
`(quoting In re Paulsen, 30 F.3d 1475, 1478–79 (Fed. Cir. 1994)).
`
`E.
`
`Legal Standard for Obviousness
`
`A claim is unpatentable under § 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 at the time the invention was made to a
`
`person having ordinary skill in the art to which said subject matter pertains.
`
`18
`
`
`
`IPR2018-01140
`Patent 9,402,032 B2
`
`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 indicia of non-obviousness
`
`(i.e., secondary considerations).4 Graham v. John Deere Co., 383 U.S. 1,
`
`17–18 (1966). “To satisfy its burden of proving obviousness, a petitioner
`
`cannot employ mere conclusory statements. The petitioner must instead
`
`articulate specific reasoning, based on evidence of record, to support the
`
`legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829
`
`F.3d 1364, 1380 (Fed. Cir. 2016). Furthermore, in assessing the prior art,
`
`the Board must consider whether a person of ordinary skill would have been
`
`motivated to combine the prior art to achieve the claimed invention. In re
`
`Nuvasive, 842 F.3d 1376, 1381 (Fed. Cir. 2016).
`
`F.
`
`Anticipation of claims 1 and 13 by Ogino.
`
`Petitioner contends that claims 1 and 13 are anticipated under
`
`35 U.S.C. § 102(a)(2) by Ogino. Pet. 16–34.
`
`Relying on Dr. Sasián, Petitioner argues that Ogino discloses all of the
`
`limitations of challenged claims 1 and 13. Id.; Ex. 1005 ¶¶ 42–48.
`
`“A lens assembly”
`
`Petitioner submits that Ogino discloses a fixed-focus imaging lens that
`
`forms an optical image of a subject on an image device. Pet. 16; Ex. 1005,
`
`1:7–8. Patent Owner does not contest this argument. Based on Ogino’s
`
`
`4 No evidence of objective indicia of non-obviousness has been introduced
`into this record.
`
`19
`
`
`
`IPR2018-01140
`Patent 9,402,032 B2
`
`disclosure, we agree with Petitioner that Ogino’s “fixed-focus imaging lens”
`
`corresponds to the “lens assembly” recited in claim 1.
`
`“a plurality of refractive lens elements arranged along an optical axis”
`
`Petitioner contends that Ogino, as shown in Figure 6, reproduced
`
`supra, includes lenses L1 to L5 arranged along optical axis Z1. First lens L1
`
`is disclosed as having positive refractive power. Pet. 18; Ex. 1005, 9:11.
`
`Second lens L2 is characterized as having “refractive power.” Pet. 18; Ex.
`
`1005, 9:32. Third lens L3 is disclosed to have “negative refractive power in
`
`the vicinity of the optical axis.” Pet. 18; Ex. 1005, 7:60–62. Fourth lens L4
`
`is disclosed to have “positive refractive power.” Pet. 18; Ex. 1005, 7:67.
`
`Fifth lens L5 is disclosed to have “negative refractive power.” Pet. 18; Ex.
`
`1005, 8:8.
`
`
`
`Patent Owner does not contest this allegation. Based on Ogino’s
`
`disclosure, we agree with Petitioner that Ogino teaches a plurality of
`
`refractive lens elements arranged along an optical axis, as recited in claim 1.
`
`“wherein at least one surface of at least one of the plurality of lens elements
`
`is aspheric”
`
`Petitioner contends that Ogino discloses that “in the imaging lenses
`
`according to Examples 1 to 6, both surfaces of each of the first to fifth
`
`lenses L1 to L5 are aspheric.” Pet. 18; Ex. 1005, 15:22–24.
`
`Patent Owner does not dispute this contention. Based on Ogino’s
`
`disclosure, we agree with Petitioner that Ogino teaches that at least one
`
`surface of at least one of its plurality of lens elements is aspheric, as recited
`
`in claim 1.
`
`20
`
`
`
`IPR2018-01140
`Patent 9,402,032 B2
`
`
`“Wherein the lens assembly has an effective focal length (EFL)”
`
`Petitioner submits that Ogino discloses that “[t]he focal length of a
`
`lens assembly (also referred to as the effective focal length, EFL) is the
`
`distance from the principal point to the focal point.” Pet. 21; Ex. 1007, 2:59–
`
`61.
`
`Patent Owner does not dispute Petitioner’s position. Based on
`
`Ogino’s disclosure, we agree with Petitioner that Ogino’s lens assembly has
`
`an effective focal length, construed herein as “the focal length of a lens
`
`assembly,” as recited in claim 1.
`
`“Wherein the lens assembly has a total track length (TTL) of 6.5 millimeters
`
`or less”
`
`As construed supra, a person having ordinary skill in the art would
`
`understand total track length (TTL) to be 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 corresponding to
`
`either the electronic sensor or a film sensor.” Order 3; see Ex. 1008, 3:24–
`
`26. Petition contends that, as shown in Ogino Fig. 6, reproduced supra, the
`
`person having ordinary skill in the art would identify the total track length of
`
`Ogino’s system to be the distance between the object-side surface of first
`
`lens L1 and imaging device 100, which corresponds to image plane R14.
`
`Pet. 21; Ex. 1003 ¶ 48; Ex. 1005, Fig. 6. Petitioner submits that
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