Corephotonics, Ltd.

Patent Trials and Appeals Board

Nov 8, 2021

IPR2020-00906 (P.T.A.B. Nov. 8, 2021)

Trials@uspto.gov Paper 54
571-272-7822 Date: November 8, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

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

IPR2020-00906
Patent 10,225,479 B2

Before BRYAN F. MOORE, JOHN F. HORVATH, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
HORVATH, Administrative Patent Judge.
JUDGMENT
Determining No Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
A. Background and Summary
Apple, Inc. (“Petitioner”) filed a Petition requesting inter partes
review of claims 19–22 (“the challenged claims”) of U.S. Patent No.
10,225,479 B2 (Ex. 1001, “the ’479 patent”). Paper 3 (“Pet.”), 10.
Corephotonics Ltd. (“Patent Owner”) filed a Preliminary Response. Paper 8
(“Prelim. Resp.”). Upon consideration of the Petition and Preliminary
Response, we instituted inter partes review of all challenged claims on all
grounds raised. Paper 10 (“Dec. Inst.”).
Patent Owner filed confidential (Paper 15) and public (Paper 16)
versions of a Response to the Petition. See Paper 16 (“PO Resp.”).1
Petitioner filed confidential (Paper 24) and public (Paper 23) versions of a
Reply. See Paper 23 (“Pet. Reply”). Patent Owner filed a Sur-Reply. See
Paper 33 (“PO Sur-Reply”). An oral hearing was held on August 12, 2021,
and the hearing transcript is included in the record. See Paper 52 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(b). This is a Final Written
Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons
set forth below, we find Petitioner has failed to demonstrate by a
preponderance of evidence that claims 19–22 of the ’479 patent are
unpatentable on the grounds raised in the Petition.
B. Real Parties-in-Interest
Petitioner and Patent Owner identify themselves, respectively, as the
real parties-in-interest. Pet. 1; Paper 5, 1.

1 Throughout this Decision, unless noted otherwise, we cite to the public
versions of the papers filed by the parties.
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C. Related Matters
Petitioner and Patent Owner identify Corephotonics Ltd. v. Apple Inc.,
5:19-cv-04809 (N.D. Cal.), as a district court proceeding that can affect or
be affected by this proceeding, and Petitioner also identifies IPR2020-00905
as an inter partes review that can affect or be affected by this proceeding.
Pet. 1; Paper 5, 1. In addition, we note that the ’479 patent is part of a
family of patents and patent applications that include at least U.S. Patent
Nos. 10,326,942; 10,015,408; 9,661,233; and 9,185, 291. Ex. 1001, code
(63). Many of these patents were or currently are involved in inter partes
review proceedings that could affect or be affected by a decision in this
proceeding.
D. Evidence Relied Upon2
Reference Effective Date Exhibit
Parulski US 7,859,588 B2 Dec. 28, 2010 1005
Soga3 JP 2007/259108 A Oct. 4, 2007 1006
Morgan-Mar US 8,989,517 B2 Mar. 24, 2015 1009
Kawamura4 JP S5862609 A Apr. 14, 1983 1012
Ogata US 5,546,236 Aug. 13, 1996 1026
E. Instituted Grounds of Unpatentability
We instituted review on the following grounds:
Ground Claims 35 U.S.C. § References
1 19, 20 103(a) Parulski, Ogata, Kawamura, Soga

2 Petitioner also relies upon the Declarations of Fredo Durand, Ph.D.
(Exs.1003, 1038) and José Sasián, Ph.D. (Exs. 1021, 1039).
3 Soga is a non-certified translation of a Japanese Patent Application
Publication originally published in Japanese. See Ex. 1006, 18–30.
4 Kawamura is a certified translation of an Unexamined Japanese Patent
Application Publication originally published in Japanese. See Ex. 1012, 10–
16.
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Ground Claims 35 U.S.C. § References
2 21, 22 103(a) Parulski, Ogata, Kawamura, Soga, Morgan-Mar
II. ANALYSIS
A. The ’479 Patent
The ’479 patent is directed to “a thin (e.g., fitting in a cell-phone)
dual-aperture zoom digital camera with fixed focal length lenses” that is
configured to use “partial or full fusion to provide a fused image in still
mode.” Ex. 1001, 3:18–23. Figure 1A, reproduced below, illustrates dual-
aperture zoom digital camera 100.

Figure 1A is a “block diagram illustrating a dual-aperture zoom” digital
camera 100. Id. at 5:64–65. Camera 100 includes a wide imaging
subsystem consisting of wide lens 102, wide sensor 104, and wide image
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signal processor (“ISP”) 106, and a tele imaging subsystem consisting of tele
lens 108, tele sensor 110, and tele ISP 112. Id. at 6:24–29.
Camera 100 also includes controller 114, which includes sensor
control 116, user control 118, video processing module 126 and still
processing module 128. Id. at 6:33–37. User control 118 controls various
camera functions, including, operational mode 120, region of interest
(“ROI”) 122, and zoom factor (“ZF”) 124. Id. at 6:38–40. Zoom factor 124
allows a user “to choose a zoom factor.” Id. at 6:50–51. Sensor control 116
chooses “which of the sensors is operational” based on the selected zoom
factor. Id. at 6:41–45. ROI function 122 allows a user to “choose a region
of interest,” i.e., a sub-region “on which both sub-cameras are focused.” Id.
at 6:46–50.
The dual lenses allow camera 100 to take an image having a shallow
depth-of-field (“DOF”) “by taking advantage of the longer focal length of
the Tele lens.” Id. at 4:23–27. The image taken with the Tele lens can be
enhanced “by fusing data from an image captured simultaneously with the
Wide lens.” Id. at 4:27–30. For example, the Tele lens can focus “on a
subject of the photo” and the Wide lens can focus on “a closer distance than
the subject so that objects behind the subject appear very blurry.” Id. at
4:30–34. Then, a shallow depth-of-field image can be formed when
“information from the out-of-focus blurred background in the Wide image is
fused with the original Tele image background information, providing a
blurrier background and even shallower DOF.” Id. at 4:34–38.
The process for fusing images taken with the Wide and Tele lenses is
shown in Figure 5 of the ’479 patent, which is reproduced below.
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Figure 5 is a flow chart depicting a method for acquiring a zoom image in a
dual lens camera. Id. at 9:39–40. At step 502, separate images are captured
by each of the Wide and Tele lenses. Id. at 9:40–44. At step 504, these
images are aligned on an epipolar line. Id. at 9:46–47. At step 506, a
registration map is generated. Id. at 9:47–49. At step 508, the registration
map is used to resample the Tele image. Id. at 9:50–51. At step 510, Tele
image pixel values are compared to Wide image pixel values, and if a
significant difference is detected, the Wide image pixel values are chosen for
the output image. Id. at 9:51–58. Finally, at step 512, a fused image is
generated from the re-sampled Tele image and the Wide image. Id. at 9:58–
60.
B. Illustrative Claim
Claims 19 is the only independent claim challenged. See Ex. 1001,
14:66–15:32. Claims 20–22 depend directly or indirectly from claim 19. Id.
at 15:33–15:48. Claim 19 is illustrative of the challenged claims and is
reproduced below.
19. A dual-aperture digital camera for imaging an object or
scene, comprising:
a) a Wide camera comprising a Wide lens and a Wide image
sensor, the Wide camera having a respective field of view
FOVW and being operative to provide a Wide image of the
object or scene;
b) a Tele camera comprising a Tele lens and a Tele image
sensor, the Tele camera having a respective field of view
FOVT narrower than FOVW and being operative to provide a
Tele image of the object or scene, wherein the Tele lens has
a respective effective focal length EFLT and total track
length TTLT fulfilling the condition EFLT/TTLT > 1;
c) a first autofocus (AF) mechanism coupled mechanically to,
and used to perform an AF action on the Wide lens;
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d) a second AF mechanism coupled mechanically to, and used
to perform an AF action on the Tele lens, wherein the Wide
and Tele lenses have different F numbers F#Wide and F#Tele,
wherein the Wide and Tele image sensors have pixels with
respective pixel sizes Pixel sizeWide and Pixel sizeTele wherein
Pixel sizeWide is not equal to Pixel sizeTele, and wherein the
Tele camera has a Tele camera depth of field (DOFT)
shallower that a DOF of the Wide camera (DOFW); and
e) a camera controller operatively coupled to the first and
second AF mechanisms and to the Wide and Tele image
sensors and configured to control the AF mechanisms, to
process the Wide and Tele images to find translations
between matching points in the images to calculate depth
information and to create a fused image suited for portrait
photos, the fused image having a DOF shallower than DOFT
and having a blurred background.
Id. at 14:66–15:32.
C. Level of Ordinary Skill in the Art
Petitioner identifies a person of ordinary skill in the art (“POSITA”) at
the time of the invention as someone that would have had “a bachelor’s or
the equivalent degree in electrical and/or computer engineering or a related
field and 2-3 years of experience in imaging systems including optics and
image processing.” Pet. 7 (citing Ex. 1003 ¶ 13). In our Institution
Decision, we adopted this description as our own. See Dec. Inst. 9–10.
Neither party disputes that preliminary finding, which we maintain for
purposes of this decision. See PO Resp. 4–5; Pet. Reply 1–26.
D. Claim Construction
In inter partes reviews, we interpret a claim “using the same claim
construction standard that would be used to construe the claim in a civil
action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Under this
standard, a claim is construed “in accordance with the ordinary and
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customary meaning of such claim as understood by one of ordinary skill in
the art and the prosecution history pertaining to the patent.” Id. Only claim
terms which are in controversy need to be construed and only to the extent
necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan
Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
The parties dispute the meaning of the camera controller limitation
recited in claim 19. See Pet. 8–10; PO Resp. 9–11; Pet. Reply 1–4; PO Sur-
Reply 2–3. We did not provide a preliminary construction for this term in
our Institution Decision because Patent Owner initially did not dispute
Petitioner’s proposed construction or argue for an alternative construction.
See Dec. Inst. 10–11. Although the parties currently dispute the meaning of
this limitation, we need not construe it because our decision does not depend
on its meaning. See Nidec, 868 F.3d at 1017.
E. Patentability of Claims 19–21
Petitioner argues claims 19 and 20 are unpatentable over Parulski,
Ogata, Kawamura, and Soga, and claims 20 and 21 are unpatentable over
Parulski, Ogata, Kawamura, Soga, and Morgan-Mar. Pet. 12–74. Patent
Owner disagrees. PO Resp. 36–80.
For the reasons discussed below, we find Petitioner has failed to
produce sufficient evidence to demonstrate that a person having ordinary
skill in the art would have known that a scaled version of Ogata’s lens could
have been used in Parulski’s camera with reasonable expectation of success.
This failure is dispositive of all grounds in the Petition. Accordingly, we
limit our analysis below to the evidence and argument presented regarding
the teachings of Parulski, Ogata, and the reasons to combine these
references.
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1. Parulski
Parulski discloses “a digital camera that uses multiple lenses and
image sensors to provide an improved imaging capability.” Ex. 1005, 1:8–
10. A schematic illustration of Parulski’s camera is shown in Figure 1,
which is reproduced below.

Figure 1 is “a block diagram . . . of a digital camera using a first zoom lens
[3] with a first image sensor [12], and a second zoom lens [4] with a second
image sensor [14].” Id. at 8:28–30, Fig. 1. Each of zoom lenses 3 and 4
could be “replaced with a fixed focal length lens.” Id. at 13:3–6. Image
sensors 12 and 14 can “have a variety of aspect ratios” and “do not have to
have the same specifications.” Id. at 13:26–32. Parulski’s digital camera
could be, for example, the Kodak Easyshare V610 dual lens digital camera,
which uses a 6MP (megapixel) 1/2.5” charge coupled device (CCD) as an
image sensor. Id. at 5:21–35; see also Ex. 1033, 62 (showing the Easyshare
V610 uses a 6 MP 1/2.5” CCD). Charge coupled devices of this type were
rectangular with a 7.18 mm diagonal. See Ex. 1030, 1.
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In Parulski’s digital camera, analog data captured by image sensors 12
and 14 are digitized by analog signal processors 22 and 24, respectively, and
sent to multiplexers 34 and 36. Ex. 1005, 13:48–59. Control processor 40
uses multiplexer 34 to select data from one of image sensors 12 or 14 as
image data and uses multiplexer 36 to select data from the other of image
sensors 12 or 14 as autofocus data. Id. at 14:1–5. Image processor 50
generates an image from the selected image data and autofocus signals for
first and second zoom lenses 3 and 4 from the selected autofocus data. Id. at
14:5–16.
2. Ogata
Ogata discloses “[a] wide-angle photographic lens system which has a
short total length . . . a high aperture ratio and excellent optical performance,
and is suited for use with the collapsible mount type cameras.” Ex. 1026,
3:2–5. Ogata’s wide-angle lens system is shown in Figure 1, which is
reproduced below.

Figure 1 of Ogata is a schematic illustration of a first embodiment of Ogata’s
wide-angle lens system. Id. at 12:1–4.
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Lens prescription data for the first embodiment of Ogata’s lens is
provided in tabular form in column 7. An annotated version of that table is
reproduced below.

Id. at 7:35–62. The Figure shows lens prescription data in tabular form for
the first embodiment of Ogata’s lens, annotated to highlight the index of
refraction (n3) and Abbe5 number (ʋ3) for the third lens element.

5 An Abbe number is an approximate measure of how a material’s index of
refraction depends on the frequency of light passing through it. See, e.g.,
Darryl Meister, Understanding Reference Wavelengths (April 12, 2010),
available at http://www.opticampus.opti.vision/files/memo_on_reference_
wavelengths.pdf (last visited October 18, 2021).
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3. Reasons to Combine Parulski and Ogata
Petitioner argues that it would have been obvious to modify Parulski
to include a scaled version of Ogata’s wide-angle lens because “Parulski
does not indicate lens prescription data for . . . [the] lens systems in its
camera.” Pet. 29. Thus, a skilled artisan would have looked to Ogata for
“lens data that specifies the properties and configuration that teaches . . .
how to construct a wide-angle lens unit.” Id. (citing Ex. 1003 ¶ 63).
Petitioner argues that a skilled artisan would have known that the
wide-angle lens described in Parulski (“40 mm equiv.”) would have had a
56.8 degree FOV6 and focused its image onto the 43.27 mm diameter image
plane of a 35 mm camera. Id. at 29–30 (citing Ex. 1003 ¶ 68; Ex. 1005,
23:23–43; Ex. 1019, 107). Petitioner further argues that such an artisan
would have also known that scaling Ogata’s lens to instead focus its image
onto the 7.12 mm diameter image plane of a 1/2.5” CCD would have
resulted in a scaled lens having a similar 63.4 degree FOV and 2.9 F-
number, but a 5.72 mm effective focal length (EFL) and a 6.89 mm total
track length (TTL). Id. at 26–28 (citing Ex. 1005, 5:21–35; 1020, 57;
Ex. 1021 ¶¶ 37–39; Ex. 1022, 254–255; Ex. 1026, 7:35–61, Fig. 1; Ex. 1029;
Ex. 1030; Ex. 1033, 62).
Petitioner supports its argument with the testimonial evidence of Dr.
Sasián. See Pet. 26–27 (citing Ex. 1021 ¶ 38). According to Dr. Sasián, a
person skilled in the art could have used Zemax lens design software to scale
Ogata’s lens. Ex. 1021 ¶ 39 (citing Ex. 1021, App’x, Figs. 3A–3C). The
appendix to Dr. Sasián’s declaration includes a heading “C” entitled “Fig. 3
- Ogata scaled to fill a 1/2.5” image sensor using Zemax (v.02/14/2011).”

6 Corresponding to a 28.40 degree HFOV or half field-of-view.
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Id. at 34.7 The appendix also includes a heading “C.3” entitled “Figure 3C –
Prescription Data,” followed by a “Lens Data Editor” spreadsheet, an
annotated version of which is reproduced below.8

The Figure is an annotated version of “Fig. 3C – Prescription Data” showing
lens prescription data entered into a “Lens Data Editor” spreadsheet and

7 When citing to the appendix, we cite to the declaration page numbers.
8 In Zemax, a “Lens Data Editor is the primary spreadsheet where the
majority of the lens data will be entered.” Ex. 1022, 789.
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annotated to highlight the index of refraction (1.83) and Abbe number (26.5)
of the third lens element in the “Glass” column.
A few inconsistencies between the lens prescription data for Ogata’s
first embodiment lens and the data entered into the “Lens Editor Data”
spreadsheet are noticeable. First, the Abbe number for the third lens element
is 42.72 in Ogata’s first embodiment lens and 26.5 (i.e., 38% smaller) in the
“Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:46, with Ex. 1021,
36. Second, the data for the fourth and tenth aspherical surfaces are
noticeably different. For example, the fourth order term (A4) for the fourth
aspherical surface is 0.66 x 10-4 in Ogata’s first embodiment lens and
151.69 x 10-4 (i.e., 0.015) in the “Lens Data Editor” spreadsheet. Compare
Ex. 1026, 7:55, with Ex. 1021, 36. Neither Petitioner nor Dr. Sasián explain
these discrepancies.
Patent Owner identifies the Abbe number discrepancy for the third
lens element between Ogata’s first embodiment lens and the “Lens Data
Editor” spreadsheet. See PO Resp. 31. Patent Owner argues that, due to this
discrepancy, “Dr. Sasián’s field curvature, distortion and OPD [optical path
difference] fan plots on page 35 of his declaration do not accurately reflect
the performance of a scaled version of Ogata’s Embodiment 1 lens.” Id.
(citing Ex. 2015 ¶ 62). Moreover, Dr. Moore opines that “[a] significant
change in the index of refraction or the Abbe number can change a highly
performing lens design into an unacceptable design.” Ex. 2015 ¶ 88.
Petitioner was provided an opportunity to try to explain or correct this
Abbe number discrepancy in its Reply, but did not attempt to do so. See Pet.
Reply, 1–26. Instead, Petitioner argued that “Petitioner and Dr. Sasián have
provided detailed lens design software analysis, which confirms the viability
of . . . Ogata’s lens designs in Parulski and reinforces the Petition’s
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motivation to use the same.” Id. at 15 (citing Pet. 21–24, 28–30; Ex. 1021
¶¶ 35–45, App’x; Ex. 1039 ¶ 22, App’x).9 But Dr. Sasián’s lens design
analysis appears to be based on the erroneous data discussed above, calling
into question Petitioner’s contention that a person skilled in the art would
have known that Ogata’s lens could be scaled to work in Parulski’s camera
with a reasonable expectation of success. Indeed, Petitioner criticized Patent
Owner for offering opinions that were not based on lens design software
analysis because a person skilled in the art “would have performed lens
design software analysis and formed its opinion based on the lens design
software.” Id.
In an inter partes review, Petitioner is “master of its complaint.” SAS
Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018). Thus, the Petition is
“the centerpiece of the proceeding both before and after institution.” Id. at
1358. Moreover, 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). Petitioner’s
contention that a person skilled in the art would have found it obvious that
Ogata’s lens could have been scaled to work in Parulski’s camera with a
reasonable expectation of success is entirely based on Dr. Sasián’s opinion,
which is based on Dr. Sasián’s Zemax lens design software analysis. See
Pet. 24–30; see also Ex. 1021 ¶¶ 35–39, App’x, 34–36. But, as noted above,
the lens prescription data used for that analysis appears to differ from the

9 Petitioner cites paragraphs 50–55 and 61–65 of Dr. Sasián’s declaration,
which has 46 enumerated paragraphs. See Ex. 1021, 27. Dr. Sasián analyzes
scaling Ogata’s lens in paragraphs 35–39 of his declaration and scaling
Kawamura’s lens in paragraphs 40–45. We make that correction here.
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lens prescription data for Ogata’s first embodiment lens.10 Compare
Ex. 1026, 7:46, with Ex. 1021, 36. We accept as true Petitioner’s contention
that a person skilled in the art “would have performed lens design software
analysis and formed [an] opinion based on the lens design software.” Pet.
Reply 15 (citing Ex. 1039 ¶ 22). A logical consequence of that contention is
that the opinion of a person skilled in the art will be only as reliable as the
lens design software analysis that person performed, which will be only as
reliable as the data used to perform that analysis.
Moreover, as also discussed above, Patent Owner pointed out this
Abbe number discrepancy in its Patent Owner Response. See PO Resp. 31.
This put Petitioner on notice of the discrepancy and shifted the burden of
production to Petitioner to either correct its analysis or explain why the
Abbe number discrepancy did not affect the analysis. See Dynamic
Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
2015) (explaining the shifting burden of production in an inter partes review
may require “producing additional evidence and presenting persuasive
argument based on new evidence or evidence already of record”) (internal
citations omitted). Petitioner neither corrected its reason to combine
analysis nor explained why it would not be affected by the apparent Abbe
number discrepancy. See Pet. Reply 1–26.
Finally, in response to Patent Owner’s argument that a person skilled
in the art “would not have used the Ogata lens design scaled down,” but
would have instead constructed a miniature camera lens using “a fully

10 We note, as well, that the lens prescription data for example 1 of
Kawamura’s lens appears to differ from the lens prescription data Dr. Sasián
used to perform the Zemax analysis for scaling Kawamura’s lens. Compare
Ex. 1012, 3, with Ex. 1021, 37, 39.
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aspheric design with plastic elements” having an aperture stop near the front
of the lens (PO Resp. 58–59), Petitioner argues that a person of ordinary
skill in the art “could have used lens design software to modify and adjust an
older lens design into a miniaturized version” because the “modifications or
adjustments [needed] were within the skill” level of a person of ordinary
skill in the art (Pet. Reply 15–16 (citing Ex. 1039 ¶¶ 24–31)).11 Patent
Owner argues that “Dr. Sasián’s new Zemax analyses should be disregarded
as an untimely obviousness theory presented in reply” because “[t]he Zemax
analyses in Dr. Sasián’s original declaration simply took the lens
prescriptions in the Kawamura and Ogata patents and confirmed that Zemax
would scale them.” PO Sur-Reply 13–14.
We agree with Patent Owner. The Petition contends that a person of
ordinary skill in the art would have known that Ogata’s lens (using glass lens
elements) could have been scaled to focus an image onto a 1/2.5” image
sensor for use in Parulski’s camera. See Pet. 24–30; Ex. 1021, 36.
Petitioner’s reply evidence and argument is not introduced to support that
contention but a different contention—that a person of ordinary skill in the
art would have known that Ogata’s lens could have been redesigned using
aspheric plastic lens elements to focus an image onto a 1/3” image sensor.
See n.11, supra. This is a new contention that does not support Petitioner’s

11 We note that Dr. Sasián’s analysis discloses how Kawamura’s lens can be
modified by replacing the spherical glass lens elements with aspherical
plastic lens elements, moving the aperture stop to the first lens element,
changing the F number to 2.8, and reducing the effective focal length to
focus an image onto a 1/3” image sensor rather than a 1/2.5” image sensor.
See Ex. 1039 ¶¶ 25–30; App’x, 17–18. Dr. Sasián also opines that although
this analysis illustrates how Kawamura’s lens could have been modified, a
person skilled in the art “would have recognized that Ogata could have been
similarly adjusted to yield a miniaturized form-factor.” Id. ¶ 25.
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original contention that Ogata’s lens could simply be scaled. Therefore,
because it is a new and untimely contention, we do not consider it further.
See Consolidated Trial Practice Guide (Nov. 2019)12 (“Petitioner may not
submit new evidence or argument in reply that it could have presented
earlier, e.g., to make out a prima facie case of unpatentability.”); see also
Ariosa Diagnostics v. Verinata Heath, Inc., 805 F.3d 1359, 1368 (Fed. Cir.
2015) (“The Board must make judgments about . . . when a Reply contention
crosses the line from the responsive to the new.”); Intelligent Bio-Sys., Inc.
v. Illumina Cambridge Ltd., 821 F.3d at 1359, 1369–70 (Fed. Cir. 2016)
(affirming the Board’s rejection of a reply argument presenting an “entirely
new rationale to explain why one of skill in the art would have been
motivated to combine” prior art references); Henny Penny Corp. v.
Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019) (affirming the
Board’s rejection of a reply argument presenting an “entirely new rationale”
for why a claim would have been obvious).
For the reasons discussed above, we find Petitioner has failed to
muster sufficient evidence to demonstrate by a preponderance of evidence
that a person or ordinary skill in the art at the time of the invention would
have known that Ogata’s lens could have been scaled to work in Parulski’s
camera with a reasonable expectation of success. Accordingly, we find
Petitioner has failed to demonstrate that claims 19 and 20 are unpatentable
over Parulski, Ogata, Kawamura, and Soga or that claims 20 and 21 are
unpatentable over Parulski, Ogata, Kawamura, Soga, and Morgan-Mar.

12 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated
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III. CONCLUSION
We have reviewed the Petition, Patent Owner Response, Petitioner
Reply, and Patent Owner Sur-Reply. We find, on this record, Petitioner has
failed to demonstrate by a preponderance of evidence that claims 19–22 of
the ’479 patent are unpatentable.

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner has failed to show by a preponderance of
evidence that claims 19 and 20 are unpatentable under 35 U.S.C. § 103(a)
over Parulski, Ogata, Kawamura, and Soga; and
FURTHER ORDERED that Petitioner has failed to show by a
preponderance of evidence that claims 21 and 22 are unpatentable under
35 U.S.C. § 103(a) over Parulski, Ogata, Kawamura, Soga, and Morgan-
Mar; and
FURTHER ORDERED that this Decision is final, and a party to this
proceeding seeking judicial review of the Decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

Claims 35 U.S.C. § Reference(s) /Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
19, 20 103(a) Parulski, Ogata,
Kawamura, Soga
19, 20
21, 22 103(a) Parulski, Ogata,
Kawamura, Soga,
Morgan-Mar
21, 22
Overall
Outcome
19–22
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Patent 10,225,479 B2
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FOR PETITIONER:
Michael Parsons
Andrew Ehmke
Jordan Maucotel
HAYNES & BOONE, LLP
michael.parsons.ipr@haynesboone.com
andy.ehmke.ipr@ haynesboone.com
jordan.maucotel@ haynesboone.com

FOR PATENT OWNER:
Neil C. Rubin
Jay Chung
RUSS AUGUST & KABAT
nrubin@raklaw.com
jchung@raklaw.com