Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 41
`Entered: July 27, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`____________
`
`IPR2020-00489
`U.S. Patent 10,015,408 B2
`____________
`
`
`Before GREGG I. ANDERSON, MONICA S. ULLAGADDI, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`ULLAGADDI, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Petitioner’s Request on Rehearing
`of the Final Written Decision
`37 C.F.R. § 42.71
`Denying Petitioner’s Request to Admit and Consider New Evidence
`Denying Patent Owner’s Request to Admit and Consider New Evidence
`37 C.F.R. § 42.5
`
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`IPR2020-00489
`Patent 10,015,408 B2
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`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition to institute inter partes review of
`claims 5 and 6 of U.S. Patent No. 10,015,408 B2 (Ex. 1001, “the ’408 patent”) on
`February 5, 2020. Paper 2 (“Petition” or “Pet.”). Corephotonics, Ltd. (“Patent
`Owner”) filed a Preliminary Response. Paper 7. We instituted an inter partes
`review of each of the challenged claims on the ground set forth in the Petition.
`Paper 8. Subsequent to institution, Patent Owner filed a Patent Owner Response
`(Paper 13, “PO Resp.”), Petitioner filed a Petitioner Reply (Paper 18), and Patent
`Owner thereafter filed a Sur-Reply (Paper 20).
`An oral hearing was held on May 26, 2021 and a transcript of the hearing
`has been entered into the record. Paper 31. On July 26, 2021, we entered a Final
`Written Decision (Paper 32, “Decision” or “FWD”) determining that Petitioner did
`not demonstrate by a preponderance of the evidence that any of the challenged
`claims were unpatentable. Petitioner requests rehearing (Paper 33, “Req. Reh’g”)
`of our Decision.
`In its Rehearing Request, Petitioner urges us to reconsider our Decision, and
`then also urges us to admit and consider new documents that became available
`after we entered our Decision. Specifically, Petitioner urges us to admit a brief
`(“Korean Brief”) prepared and submitted by Patent Owner in connection with a
`proceeding before the Patent Court of Korea (“Korean Court”).1 Patent Owner
`filed a brief opposing the admission of the Korean Brief. Paper 34 (“PO Brief”).
`Patent Owner also urges us to admit and consider new documents. Specifically,
`Patent Owner filed a brief urging us to admit a certified translation of another brief,
`
`
`1 Petitioner attaches a certified translation of the Korean Brief to its Rehearing
`Request.
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`filed by a third party, LG Innotek Co., Ltd. (“LG Brief”) in a proceeding before the
`3rd Division of the Korean Court. Paper 35 (“PO LG Brief”). Petitioner opposed
`admission of the LG Brief. Paper 36 (“Opp. LG Brief”). For the reasons set forth
`below, Petitioner’s Rehearing Request is denied. We further do not admit either the
`Korean Brief or the LG Brief.
`
`LEGAL STANDARDS
`II.
`A party requesting rehearing bears the burden of showing that a decision
`should be modified. 37 C.F.R. § 42.71(d). The party must specifically identify
`all matters it believes the Board misapprehended or overlooked, and the place
`where each matter was addressed previously in a motion, an opposition, or a
`reply. Id. A request for rehearing, therefore, is not an opportunity merely to
`disagree with the Board’s assessment of the arguments or weighing of the
`evidence, or to present new arguments or evidence. See, e.g., Presidio
`Components, Inc. v. AVX Corporation, IPR2015-01332, Paper 21, 4 (PTAB
`Feb. 21, 2016) (“Patent Owner’s arguments in this regard amount to a mere
`disagreement with our analysis or conclusion. But mere disagreement with our
`analysis or conclusion is not a sufficient basis for rehearing. It is not an abuse of
`discretion to provide analysis or conclusion with which Patent Owner
`disagrees.”).
`
`III. THE PARTIES’ ARGUMENTS
`In the Final Written Decision, we determined that Petitioner had not met its
`burden of showing, by a preponderance of the evidence, that claims 5 and 6 of the
`’408 patent are unpatentable over U.S. Patent Application Publication No.
`2012/0026366 A1 (Ex. 1005, “Golan”) and Japanese Patent Application
`Publication No. S58-62609 (Ex. 1007, “Kawamura”). FWD 2; see Pet. 13–20.
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`Petitioner now requests that we reconsider the conclusion rendered in our Decision
`and instead conclude that claims 5 and 6 are unpatentable over the combination of
`Golan and Kawamura. Req. Reh’g 3.
`A. Arguments Regarding the Final Written Decision
`In Section II.A of its Request for Rehearing, Petitioner argues that, in
`determining a person of ordinary skill in the art (“POSITA”) would not have been
`motivated to combine Golan and Kawamura, we relied on Patent Owner’s
`“unsupported representations that [a] ‘rich literature’ of miniature telephoto lens
`designs existed in 2013” and arguments that a POSITA would have looked to this
`“rich literature” instead of looking to Kawamura. Req. Reh’g 5 (quoting FWD 36
`(“A POSITA would not have been motivated to go beyond [the] rich literature of
`miniature lens designs and try scaling old lenses.” (quoting Ex. 2003 ¶ 87))) (citing
`PO Resp. 39; Paper 31, 29:21–24; Sur-Reply 14). Petitioner contends that Patent
`Owner directly contradicted its representation about the “‘rich literature’ of
`miniature telephoto lens designs” in a proceeding before the Korean Court and
`that, accordingly, our determination that Petitioner’s challenge lacked a sufficient
`motivation to combine Golan and Kawamura is unsupported. Id. (emphasis
`omitted) (citing Ex. 1036, 2, 7).2 Infra §§ IV.A–B.
`In Section II.B of the Rehearing Request, Petitioner argues that neither
`Golan nor Kawamura are limited to their examples and that the Board
`misconstrued the scope of these references by limiting the disclosed devices to the
`specific dimensions set forth in the disclosed examples. Id. at 7–9 (“The Decision
`
`
`2 When referring to the Korean Brief, Petitioner cites to Exhibit 1036. A certified
`translation of the Korean Brief was filed as an attachment to Petitioner’s Request
`for Rehearing, not as an exhibit.
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`effectively treated Golan’s teachings as excluding scope that does not require a
`miniature telephoto lens, based solely on an exemplary image sensor in Golan’s
`background. This is clear error.”). Petitioner contends that our Decision “explained
`that ‘disclosure of the 5 megapixel image sensor array in Golan supports the
`finding that Golan is at least applicable to miniature digital cameras and image
`sensors such as those used in mobile devices’, but provided no explanation of why
`and how such ‘at least applicable’ finding operated as a limitation on a POSITA’s
`understanding of Golan’s scope, by excluding scope beyond the ‘at least
`applicable’ finding.” Req. Reh’g 8 (citing FWD 34) (emphasis omitted). Infra
`§§ IV.C, IV.G.
`Petitioner additionally argues that the Board improperly required that the
`supporting reference, U.S. Patent No. 8,896,697 B2 to Golan et al. (Ex. 1022,
`“Golan ’697”) “mention Golan or the invention described” to inform a POSITA’s
`understanding of Golan. See id. at 11. Petitioner further argues that the Board made
`unsupported factual findings by not finding there was sufficient support for image
`sensors of Golan ’697 to correspond to the device and method of Golan. Id. at 12
`(“The Board’s statement that ‘[t]here is no … evidence that Golan’s teachings are
`applicable to larger-scale imaging systems’ (FWD, at 34) is thus erroneous,
`because it ignores the disclosure in Golan ’697 (incorporating provisional
`application No. 61/167,226, ‘the ’226 Provisional’) of precisely such applications
`of the teachings of Golan to a larger-scale imaging system.”). Petitioner further
`argues that our Decision “overlooked that Golan (APPL-1005) and Golan 697
`(APPL-1022) are related patents, both claiming priority to the same provisional . . .
`and incorporating that same provisional by reference” and “[a] POSITA would
`have understood—from the face, common priority and incorporated content—
`correspondence between a related patent and patent publication from the same
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`provisional.” Id. at 12 (citing Ex. 1005, code (60), ¶ 1; Ex. 1022, code (60), 1:7–
`10); infra § IV.D.
`In Section II.C, Petitioner argues that our reliance on Dr. Moore’s testimony
`was conclusory and ignored modifications well known to a POSITA. Req. Reh’g
`16. Petitioner further contends that we erred in concluding that Petitioner’s
`contention of predictable results was generic without analyzing Petitioner’s
`arguments. Id. (“The Board ignored well-known modifications other than scaling,
`and ignored Dr. Sasián’s detailed testimony (including lens design software
`analysis) regarding how a POSITA would have modified Kawamura, not
`simply/only scaled it, to smaller sizes”) (citing Pet. Reply, 22–23; Ex. 1013 ¶¶ 28–
`33, Appendix B-ZEMAX analysis, ¶¶ 40–49); infra §§ IV.I–J.
`Finally, Petitioner argues the Board erred by requiring bodily incorporation
`of Kawamura’s exemplary reference into Golan’s system and ignored
`modifications that were within a POSITA’s skill. Req. Reh’g 16. Petitioner also
`argues that “the Decision incorrectly required conclusory proof of ‘a finite number
`of identified, predictable solutions,’ which is not necessary to show obviousness.”
`Id. at 17 (citing FWD, 38 (“a POSITA would have understood that there were only
`a few options for telephoto lens design”)). Infra §§ IV.H–K.
`B. Arguments Regarding the Korean Brief
`Petitioner argues that “good cause exists because PO’s admission to the
`Korean tribunal directly contradicts the representations PO made to this one, and
`this tribunal was thereby misled into finding in PO’s favor based on those
`misrepresentations.” Req. Reh’g 1. According to Petitioner, “PO and its expert
`failed to identify any miniature telephoto lens design out of its alleged ‘rich
`literature,’ so the Board relied solely on PO’s misrepresentation” but that “days
`after the FWD, Corephotonics admitted to the Korean tribunal that ‘there were
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`hardly any telephoto lens assemblies applied to portable terminals’ in 2013.” Id. at
`1–2 (citing Ex. 1036, 2, 7); see id. at 2 (citing Ultratec, Inc. v. CaptionCall, LLC,
`872 F.3d 1267, 1271–75 (Fed. Cir. 2017) (abuse of discretion where Board refused
`to admit and consider conflicting evidence); Paice LLC v. Toyota Motor Corp.,
`504 F.3d 1293, 1312 (Fed. Cir. 2007) (counsel statements weighed as evidentiary
`admissions)).
`Petitioner further argues that “good cause exists because this new evidence
`could not have been presented earlier, as PO waited until after the FWD before
`making its contrary admission in Korea” and that “[t]he Board has found ‘good
`cause’ in similar circumstances.” Id. at 2 (citing Unified Patents v. MV3 Partners,
`IPR2019-00474, Paper 16 at 1–4 (PTAB Aug. 5, 2019) (admitting transcript as
`new evidence on rehearing where hearing occurred after the Board’s decision);
`Ultratec, 872 F.3d at 1272 (“inconsistent testimony did not exist sooner”)).
`Patent Owner responds that the statements in the Korean Brief cited by
`Petitioner do not show any contradiction on the part of Patent Owner. PO Brief 1
`(explaining that the statements regarding lenses in before the Korean Tribunal dealt
`with lenses with a Total Track Length (TTL length of < 6.5 mm while scaling
`Kawamura to be compatible with Golan would lead to a lens with a TTL length of
`13.49 mm). According to Patent Owner, “[e]ven assuming that no telephoto lenses
`for ‘portable terminals’ requiring TTL < 6.5 mm had existed in 2013, that would
`not contradict anything said by Corephotonics or relied on by the Board in the
`FWD concerning the availability of telephoto lens designs that could have been
`used instead of a scaled Kawamura lens.” Id.
`Patent Owner further argues that the statements in the Korean Brief were
`made only as statements about the undeveloped record in the Korean case, and
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`reflect the substantive difference between American and Korean patent law,
`namely, the requirement of an inventive step in Korean patent law. Id.
`Patent Owner also argues that Petitioner’s factual position based on the
`Korean Brief is contrary to what Petitioner itself has previously represented to the
`Board in other IPR proceedings. Id. at 1–2. According to Patent Owner, it is too
`late after the issuance of the Final Written Decision for Petitioner to change to a
`long-held factual position. Id. at 2.
`We discuss the parties’ arguments regarding the Korean Brief below in
`Section IV.A.
`C. Arguments Regarding the LG Brief
`Patent Owner argues that “[g]ood cause exists to admit the []certified
`translation of LG Innotek Co., Ltd.’s (LG) August 12 brief to the Patent Court of
`Korea” because “LG supplies a majority of the camera modules used by Apple, . . .
`account[ing] for a majority of LG Innotek’s revenue” and the LG Brief “clearly
`shows that Apple’s camera module supplier disagrees with the factual premise that
`Apple now asks the Board to accept: ‘that there were almost no telephoto lens
`assemblies for small form factors available in 2013.’” PO LG Brief 1.
`Patent Owner further argues that “the brief shows that Corephotonics’
`statement about ‘one precedent document’ in its brief was based on an
`incompletely developed factual record” and that LG “cites four new prior art
`references that purportedly show telephoto lens assemblies in a mobile phone.” Id.
`Finally, Patent Owner argues that
`the brief illustrates a difference in substantive law between Korea
`and the U.S. which underlies the Corephotonics statements Apple
`points to. Although LG’s counsel is aware of the U.S. IPR
`proceedings, e.g. Attachment at 17, neither they nor Corephotonics
`mentioned in the Korean case the other mobile phone telephoto lens
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`art Apple has cited in its IPRs. See Ex. 2015 at 112:7–114:18. That
`is because
`those other references were unpublished patent
`applications as of Corephotonics’ priority date. While unpublished
`applications are considered to be known to the POSITA for purposes
`of obviousness in the United States, they are not considered within
`the prior art for the purposes of “inventive step” in Korea. KIPO
`Patent Examination Guidelines, January 2021 at 303–04, 341–43
`(https://www.kipo.go.kr/upload/en/download/Patent_Examination_
`Guidelines_2021.pdf).
`
`Id.
`Petitioner responds that the LG Brief is a “non-party statement” that “is not
`
`relevant to the question presented by PO’s Korean Brief: namely, whether, in
`fairness and the interests-of-justice, PO should be allowed to take directly contrary
`positions before different judicial tribunals in order to secure patentability of
`patents from the same field and timeframe.” Opp. LG Brief 1.
`We discuss the parties’ arguments regarding the LG Brief below in Section
`
`IV.L.
`
`IV. ANALYSIS
`Turning to Petitioner’s arguments, we begin by noting that Petitioner has not
`pointed us to precedent for admitting evidence after trial has concluded and after a
`Final Written Decision has issued. See Req. Reh’g 4–7. In Huawei Device Co. v.
`Optis Cellular Tech., IPR2018-00816, Paper 19 at 4 (PTAB Jan. 8, 2019)
`(precedential), the Board determined that the standard for admitting new evidence
`with a rehearing request requires a showing of good cause. Separately, 37 C.F.R.
`§ 42.123 requires that any supplemental evidence must be filed within one month
`of the date the trial is instituted and late submissions of evidence beyond this date
`must be in the interest of justice. Id. In the present proceeding, for the reasons
`discussed below, we did not solely rely on Dr. Moore’s testimony regarding the
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`“rich literature of miniature telephoto lenses” and even if we disregard that
`testimony completely, the outcome of our Decision would not change as we
`explain in detail in Section IV.A below.
`A. The Korean Brief Is Not Admitted
`As to Petitioner’s first argument in Section II.A, Petitioner is correct in
`noting that we credited Dr. Moore’s testimony that “[a] POSITA would not have
`been motivated to go beyond [the] rich literature of miniature lens designs and try
`scaling old lenses, designed for different purposes, with little reason to expect the
`result would be manufacturable.” Req. Reh’g 5; FWD 36 (quoting Ex. 2003 ¶ 87).
`This portion of Dr. Moore’s testimony is not directly contradicted by the Korean
`Brief because, in the Korean Brief, Patent Owner states that “there were hardly any
`telephoto lens assemblies applied to portable terminals at the time the application
`of the invention of the subject patent was filed” noting that “only one . . .
`Reference 1 (Exhibit No. Eul-4) discloses the small telephoto lens assembly for
`portable terminals before the priority date of the invention of the subject patent.”
`Id. (Korean Brief Attachment 2) (emphasis added); see also id. at 7 (“Since the
`technical concept of the telephoto lens assembly for a portable terminal was
`different from the general telephoto camera in many ways, at the time of filing for
`the invention for the subject patent, a person of ordinary skill in the art did not
`think that the telephoto lens assembly could be installed in the portable terminal).
`That is, Dr. Moore refers to a breadth of miniature lens designs, whereas the
`Korean Brief more particularly refers to a dearth of telephoto lens assemblies
`applied to portable terminals––the record does not indicate that the portable
`terminals mentioned in the Korean Brief are necessarily miniature. Thus, the
`admission of the Korean Brief is moot because its admission would not affect our
`analysis. Therefore, good cause does not exist, nor would it be in the interest of
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`justice, to admit the Korean Brief as it would expend judicial resources and expand
`the scope of a concluded trial without sufficient cause.
`B. Petitioner’s Challenge Was Deficient Even Absent Dr. Moore’s Allegedly
`Contradictory Testimony
`Even if we were to exclude this portion of testimony (i.e., had this portion of
`Dr. Moore’s testimony been stricken from the record), our conclusion of
`obviousness would not change. Patent Owner’s allegedly contradictory statements
`do not change the outcome in this case because Petitioner, not Patent Owner, bears
`the burden of showing that the claims were obvious under their proposed
`combination. 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). For the reasons below in our discussion of Petitioner’s arguments set forth
`in Sections II.B and II.C of its Rehearing Request, Petitioner did not meet this
`burden––Petitioner’s challenge was deficient on its own, irrespective of whether
`we gave weight to this portion of Dr. Moore’s testimony. Stated differently, even if
`we discredited Dr. Moore’s testimony with regard to the “rich literature of
`miniature lens designs,” for example, because of the statements in the Korean
`Brief, Petitioner failed to present sufficient evidence that supports a determination
`that a POSITA would have contemplated the proposed modifications, and
`ultimately, recognized the obviousness of the proposed combination of Golan and
`Kawamura.
`C. Golan Is Not Limited to the Dimensions of Its Examples
`Petitioner’s arguments in Section II.B. of the Rehearing Request
`mischaracterize our Decision as limiting Golan and Kawamura to their examples.
`See Req. Reh’g 7–9. In our Decision, we noted that Golan expressly discloses a 5
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`megapixel image sensor array, but that “there is insufficient evidence of record to
`support the proposition that Golan’s teachings are applicable to imaging systems
`that are of a scale larger than that of the miniature cameras and image sensors used
`in mobile devices.” FWD 26. We based this determination, in relevant part, on Dr.
`Sasián’s Reply Declaration (see, e.g., Ex. 1013 ¶¶ 15–21, 28), in which he testified
`that Golan’s teachings are applicable to imaging systems that are of a scale larger
`than that of the miniature cameras and image sensors used in the systems of
`Exhibits 1022, 1024, 1026, 1029–1032, 1034, and 1035, which were cited to
`support this testimony. We found this testimony to be unpersuasive because
`Exhibits 1022, 1024, 1026, 1029–1032, 1034, and 1035 do not address devices like
`those taught by Golan. Exhibits 1022, 1024, 1026, 1029–1032, 1034, and 1035
`exemplify different sizes of imaging systems, but do not indicate that an image
`sensor array and device of the type disclosed in Golan ––a dual lens, fixed focal
`length digital imaging system with two different fields of view––would have been
`understood to have the different (larger) dimensions and pixel resolutions of the
`magnitude of Kawamura.3 See Ex. 1013 ¶ 18; PO Resp. 6–8 (citing-in-part
`Ex. 2015, 99:14–22); FWD 30 (citing Ex. 1013 ¶ 24 (citing Ex. 1005 ¶ 9)). The
`devices disclosed in Exhibits 1022, 1024, 1026, 1029–1032, 1034, and 1035 are
`smaller than that which is sufficient to accommodate a lens assembly of the size
`disclosed in Kawamura. And Dr. Sasián did not persuasively explain why the
`
`3 Exhibit 1029 discloses Kodak’s EasyShare V610 dual-lens digital camera manual
`as having a 1/2.5” sensor and a 5.3-megapixel image. Infra § IV.E. Dr. Sasián does
`not indicate that the two lenses have a fixed focal length or different fields of view,
`nor does he persuasively explain why the teachings of Exhibit 1029 would
`applicable to a system with two lenses having fixed focal lengths and/or different
`fields of view. Ex. 1013 ¶ 21.
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`teachings of Exhibits 1022, 1024, 1026, 1029–1032, 1034, and 1035 would be
`applicable to Golan. Ex. 1013 ¶¶ 15–21, 28. We did not require, as claimed by
`Petitioner, that a supporting or background reference must mention Golan or its
`invention. See FWD 30–33; see also Req. Reh’g 11 (quoting FWD 30–33 (“[t]he
`Board then compounded its exclusion error, reasoning that a supporting reference
`must ‘mention Golan or the invention described therein,’ to inform a POSITA’s
`understanding”)). Instead, we determined that “Petitioner does not point to any
`portion of these exhibits that mentions Golan or the invention described therein,”
`“[n]or does Petitioner point to evidence that sufficiently addresses the applicability
`of Golan’s specific teachings to any particular product or imaging system
`described in the cited exhibits,” nor does Dr. Sasián’s Reply Declaration “offer
`perspective or sufficient explanation as to how a POSITA would have understood
`these exhibits to support his testimony and conclusions,” nor does Petitioner “show
`sufficiently that the imaging systems in any of these exhibits achieve ‘light weight
`electronic zoom’ using ‘two fixed focal length lenses and “two (or more) image
`sensors, having different fixed FOVs”’ ‘with a large lossless zooming range,’ as
`Dr. Sasián testifies that Golan teaches.” FWD 30 (citing Ex. 1013 ¶ 24 (citing
`Ex. 1005 ¶ 9)).
`With regard to the cases we cited in our Decision as a “useful comparison”
`(i.e., using “Cf.”), Abbott Labs. v. Dey, L.P., 287 F.3d 1097, 1104 (Fed. Cir. 2002)
`and Astrazeneca AB v. Mut. Pharm. Co., 384 F.3d 1333, 1340 (Fed. Cir. 2004),
`Petitioner contends that neither case limits “the use of supplemental prior art
`references for showing a POSITA’s ‘background knowledge’ and understanding of
`reference disclosure” and that “[n]either case alters the rule that a prior art
`reference must be evaluated ‘not only for what it expressly teaches, but also for
`what it fairly suggests.’” Req. Reh’g 11 (citing Bradium Technologies LLC v.
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`Iancu, 923 F. 3d 1032, 1049 (Fed. Cir. 2019)). We agree with Petitioner that a
`prior art reference must be evaluated in context and for what it fairly suggests.
`Petitioner, however, has not shown that the prior art it cites suggest the claimed
`invention.
`D. Golan ’697 Is Not Dispositive as to how To Interpret Golan
`As set forth above, it is Petitioner’s burden in an IPR proceeding to show
`that the contested claims are unpatentable. Here, Petitioner did not provide
`sufficient explanation, nor point to relevant case law, to explain why would should
`consider the disclosure of Golan ’697 to be part of Golan’s disclosure. Golan does
`not incorporate Golan ’697 by reference, and Petitioner did not point to any case
`law supporting a presumption that Golan and Golan ’697 refer to the same
`invention because both claim priority to and incorporate by reference the ’226
`Provisional. See Req. Reh’g 12–15. We further note that Golan and Golan ’697
`have different titles, abstracts, and specifications. Compare Ex. 1001 with,
`Ex. 1022. Petitioner also does not persuasively explain why Golan ’697 provides
`relevant background information for Golan.
`Petitioner’s citations to Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353,
`1359 (Fed. Cir. 2016) and Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352,
`1357 (Fed. Cir. 2004) are inapposite. Unwired Planet concerns how we interpret
`patent claims in light of the specification, and warns against limiting claims
`beyond their plain meaning to include a limitation disclosed in all of the
`embodiments or the only embodiment. Unwired Planet, 829 F.3d at 1359.
`Similarly, in Home Diagnostics, the Federal Circuit held that “the patent’s
`preferred embodiment is just that—one way of using the invention” and “[t]hat
`disclosure alone does not clearly and unambiguously disavow other ways of
`computing the endpoint within the scope of the claim language.” Home
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`Diagnostics, 381 F.3d at 1357 (emphasis added). As we have repeatedly stated, we
`are not limiting Golan to a device having the expressly-disclosed resolution (i.e., 5
`megapixels) and correspondingly-dimensioned image sensor array and imaging
`device. We clarify that we determine, instead, that a POSITA would not have
`understood Golan to teach or suggest image sensor arrays or imaging devices of a
`size compatible with that of the telephoto lens assemblies taught or suggested by
`Kawamura.
`In any event, Golan ’697 conveys little, if anything, about size and instead,
`was cited in Dr. Sasián’s testimony as disclosing “an imaging system, operatively
`mounted on an air-born vehicle.” Ex. 1013 ¶ 17. It does not even discuss scaling an
`image sensor array, imaging device, or lens assembly––at best, it discloses that
`“[a]n image sensor is generally subject to motion and vibrations which might
`distort a detected image of a scene” in which “[t]he motion can be linear, where the
`image sensor undergoes a linear displacement or scaling, and the motion can be
`angular, where the image sensor rotates about one or more axes.” Ex. 1022, 1:23–
`27.
`E. Golan’s Disclosure of a 155-megapixel Resolution Relates to a Prior Art Single
`Optical Zoom Lens, not Its Dual-Lens Electronic Zoom Device
`Petitioner notes that our finding that Golan only discloses a size of 5
`megapixels “is, in fact, contrary to Golan’s disclosure” because Golan describes an
`example of a 155-megapixel image sensor array that can obtain an optical zoom of
`x36. Req. Reh’g 13 (citing Pet. Reply 7–11; Ex. 1005, Fig. 1, ¶ 13; Ex. 1022, 1:14–
`18, 1:67–2:1, 5:55–57; ’226 Provisional (expressly incorporated in Ex. 1005 and
`1022), 3:12–13, Fig. 5 (describing Fig. 5 as a “zoom control sub-system for an air-
`born camera system”)). Petitioner’s argument does not provide the necessary
`context of this disclosure in Golan.
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`Golan discloses that
`the present invention describes a continuous electronic zoom for an
`image acquisition system, having multiple imaging devices each with a
`different fixed field of view (FOV). Using two (or more) image sensors,
`having different fixed FOV, facilitates a light weight electronic zoom
`with a large lossless zooming range. For example, a first image sensor
`has a 60° angle of view and a second image sensor has a 60° angle of
`view. Therefore, Wide_FOV=Narrow_FOV*6. Hence, switching
`between the image sensors provide a lossless electronic zoom of 62=36.
`Ex. 1005 ¶ 9 (emphasis added). Golan contrasts this example of its invention
`having lossless electronic zoom of x36, which is achieved two image sensors each
`having fixed fields of view, with “obtain[ing] similar zoom (x36) by optical
`means,” noting that, “for an output resolution frame of 400x300, the needed sensor
`array is” a 155-megapixel image sensor array. Id. ¶¶ 10, 13 (emphasis added).
`Golan explains that “[e]lectronic zoom is accomplished by cropping an image
`down to a centered area of the image with the same aspect ratio as the original . . .
`without any adjustment of the camera's optics, and no optical resolution is gained
`in the process.” Id. ¶ 3. Golan explains that “[e]lectronic zoom does not need
`moving mechanical elements, as does optical zoom.” Id. ¶ 7 (emphasis added). As
`part of its background, Golan recognizes that “[t]ypically, a camera with a large
`dynamic zoom range requires heavy and expensive lenses, as well as complex
`design” and as such, “[t]here is a need for and it would be advantageous to have
`image sensors, having static, light weight electronic zoom and a large lossless
`zooming range.” Id. ¶¶ 7, 8. Thus, Golan contrasts the size of image sensor array
`(i.e., 155 megapixels) and lenses needed to achieve an optical zoom that is on the
`same order of electronic zoom achievable by Golan’s invention.
`
`Accordingly, we are not persuaded to alter our Decision based on this
`argument and the cited portions of Golan. More particularly, we are not persuaded
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`that Golan teaches or suggests using its invention––an imaging device with image
`sensors with fixed fields of view “having static, light weight electronic zoom and a
`large lossless zooming range”––with the contrasted “heavy and expensive lenses”
`image sensor arrays providing resolutions on the order of 155 megapixels and
`other correspondingly-sized components. Accord PO Resp. 20 (citing Ex. 2007
`(Galstain), 4; Ex. 2003 ¶ 53) (“It is only in the largest, most expensive sensors,
`having pixel counts in excess of 10 megapixels, that pixels are larger.”).
`Petitioner contends that “[t]he Board’s finding that Golan is limited to ‘a
`miniature digital camera’ with ‘correspondingly-sized image sensors (e.g., 1/4-inch
`or 1/3-inch miniature digital sensors)’ also overlooked undisputed evidence that
`the exemplary 5MP (resolution) sensor may be implemented as a sensor of
`different dimension, such as a nonminiature 1/2.5-inch sensor” and that “PO never
`addressed this evidence.” Req. Reh’g 14 (citing Pet. Reply 11; Ex. 1029, 62;
`Ex. 1013 ¶ 21; FWD, 26, 28).
`Our Decision states that “there is insufficient evidence of record to support
`the proposition that Golan’s teachings are applicable to imaging systems that are of
`a scale larger than that of the miniature cameras and image sensors used in mobile
`devices” and describes “correspondingly-sized image sensors (e.g., 1/4” or 1/3”
`miniature digital sensors)” as exemplary, not limiting as Petitioner contends. FWD
`26, 34. We note that Patent Owner’s evidence, Table 1.1 comparing camera
`formats in Galstain, does not depict whether a 1/2.5” sensor would fall under the
`“miniature camera modules” heading or the “digital still cameras” heading. Ex.
`2007, 62. The largest sensor under the “miniature camera modules” heading is 1/3”
`and the smallest sensor under the “digital still cameras” heading is 1/2.3”––if
`anything, a 1/2.5” sensor is closer to the size of sensor consistent with a digital still
`camera instead of the size of sensor consistent with a miniature camera module.
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