Apple Inc v. Corephotonics Ltd

1. Case Identification

• Patent #: 9,568,712
• Filed: May 23, 2018
• Petitioner(s): Apple Inc.
• Patent Owner(s): Corephotonics Ltd.
• Challenged Claims: 1, 2, 6, 7, 12-17, and 19

2. Patent Overview

• Title: Five-Element Optical Lens Assembly
• Brief Description: The ’712 patent discloses a compact telephoto optical lens assembly for portable electronic devices. The assembly includes five refractive lens elements and is characterized by specific structural limitations, including a total track length (TTL) to effective focal length (EFL) ratio of less than 1.0, a TTL of 6.5 mm or less, and a defined mathematical relationship between the focal lengths of the first three lenses.

3. Grounds for Unpatentability

Ground 1: Anticipation over Konno - Claims 1, 2, 7, 12, 13, 15, 16, and 19 are anticipated under §102 by Konno.

• Prior Art Relied Upon: Konno (Japanese Patent Pub. No. JP2013106289).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Konno, which discloses a "high-performance slim and small-sized imaging apparatus," anticipates every limitation of the challenged claims. The analysis focused on Konno’s "Example 2-LN2," a five-lens assembly designed for portable devices. Petitioner contended that Example 2-LN2 explicitly discloses a five-lens assembly (L1-L5) with aspherical surfaces, an EFL of 5.51 mm, and a TTL of 4.91 mm, which is less than the claimed 6.5 mm. This results in a TTL/EFL ratio of 0.891, satisfying the claimed ratio of less than 1.0. Furthermore, Petitioner calculated from Konno's provided data that the focal lengths of the first three lenses (f1=2.54 mm, f2=-4.02 mm, f3=22.96 mm) satisfy the claimed condition of 1.2×|f3| > |f2| > 1.5×f1 (27.55 > 4.02 > 3.81).
  • Key Aspects: Petitioner also asserted that Konno’s Example 2-LN2 meets the limitations of various dependent claims, including Abbe number requirements (claim 7), the convex object-side surface of the first lens (claim 13), and the meniscus shape of the second lens (claim 13).

Ground 2: Obviousness over Konno and Bareau - Claims 6 and 14 are obvious under §103 over Konno in view of Bareau.

• Prior Art Relied Upon: Konno (Japanese Patent Pub. No. JP2013106289) and Bareau ("The optics of miniature digital camera modules," SPIE Proceedings 2006).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claims 6 and 14, which depend from other claims and add the limitation of an F-number (F#) smaller than 2.9. Konno’s Example 2-LN2 lens assembly discloses an F# of 4.0. Bareau, a 2006 publication, discussed "typical lens specifications" for modern cellphone cameras, teaching that market pressures require thinner phones and better light-gathering capabilities, for which "most camera module customers specify f/2.8."
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would have been motivated to modify Konno’s lens assembly to conform to the known specifications for modern cellphone cameras as taught by Bareau. Since Konno is directed to compact lenses for portable devices, a POSITA would combine Konno’s five-lens structure with Bareau’s teaching on F-numbers to create a competitive product.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in modifying Konno’s F# from 4.0 to the desirable 2.8. Petitioner asserted this is a routine optimization achieved by adjusting the diameter of the aperture stop, a fundamental and well-understood principle in optical design. Petitioner provided ray-tracing diagrams from the Zemax optical design program to demonstrate that adjusting Konno's aperture stop achieves an F# of 2.8 while maintaining imaging performance, showing the modification was predictable and straightforward.

Ground 3: Anticipation over Eggert - Claims 15-17 are anticipated under §102 by Eggert.

• Prior Art Relied Upon: Eggert (Patent 3,388,956).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Eggert, a 1968 patent for a telephoto lens, anticipates independent claim 15 and its dependent claims 16 and 17. Petitioner argued that Eggert's Example 1 discloses a five-element telephoto lens assembly (elements I-V) where the TTL (calculated as 0.90895) is smaller than the EFL (1.0). Eggert’s tables allegedly show the first lens has positive optical power (+2.2524), and that the second and third lenses together have a combined negative optical power. Petitioner also calculated from Eggert's data that the Abbe number of the first lens (58.09) is greater than 50 and the second lens (28.66) is smaller than 30, anticipating claim 16. Finally, Eggert's tables show that the second and third lenses each have negative optical power individually, anticipating claim 17.

4. Key Claim Construction Positions

• "Total Track Length (TTL)": Petitioner contended this term should be construed consistent with its definition in the ’712 patent’s specification as "the total track length on an optical axis between the object-side surface of the first lens element and the electronic sensor." This construction was central to comparing calculated TTL values from prior art with claim limitations.
• "Effective Focal Length (EFL)": Petitioner argued this term, not explicitly defined in the patent, is well-known in the art to mean the focal length of the entire lens assembly. This established a basis for using overall system focal length values from the prior art.
• "Optical Power": Petitioner asserted that the specification uses "optical power" and "refractive power" interchangeably. This construction was critical to applying the teachings of Eggert, which uses the term "refractive power," to the "optical power" limitations of the challenged claims.

5. Key Technical Contentions (Beyond Claim Construction)

• Meniscus Lens Interpretation: For claim 13, Petitioner argued that a POSITA would understand the description of a lens as "meniscus" (e.g., in Konno) to be defined by the curvature at its center along the optical axis, not by the shape of its outer edges. This was used to counter potential arguments that the physical shape of the lens edges in Konno's diagrams contradicts the disclosure of a meniscus lens with a convex object-side surface.
• Reliance on Standard Formulas and Simulation: Across multiple grounds, Petitioner relied on standard, well-known optical engineering principles, such as the Walker equation for calculating combined optical power and the fundamental relationship between aperture stop diameter and F-number. These principles were supplemented with Zemax software simulations to confirm that the teachings of the prior art meet the claim limitations or that proposed modifications would be predictable and successful.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 2, 6, 7, 12-17, and 19 of the ’712 patent as unpatentable.