PTAB

IPR2018-01356

Apple Inc v. Corephotonics Ltd

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Optical Lens Assembly
  • Brief Description: The ’712 patent discloses a compact telephoto lens assembly for use in portable electronic devices. The assembly comprises five refractive lens elements configured to achieve good imaging quality with a small total track length (TTL), characterized by a TTL to effective focal length (EFL) ratio of less than 1.0.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 12-14 are anticipated under 35 U.S.C. §102 by Iwasaki.

  • Prior Art Relied Upon: Iwasaki (Patent 9,678,310).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that every limitation of independent claim 1 and dependent claims 12-14 is expressly or inherently disclosed in the "Example 4" embodiment of Iwasaki. Iwasaki describes a compact imaging lens, also for portable devices, that seeks miniaturization and high performance.
      • Independent Claim 1: Petitioner contended that Iwasaki’s Example 4 discloses a lens assembly with a plurality of refractive, aspheric lens elements arranged on an optical axis. Petitioner mapped specific values from Iwasaki’s optical data tables (Table 7 and Table 9) to meet the claimed performance metrics. Iwasaki's disclosed TTL of 3.89 mm met the "6.5 millimeters or less" limitation, and its disclosed TTL/EFL ratio of 0.97 met the "less than 1.0" limitation. The argument further asserted that Iwasaki’s lens system comprises five lenses in the claimed order of refractive power (positive, negative, negative, positive, negative).
      • To show anticipation of the focal length condition 1.2×|f3|>|f2|>1.5×f1, Petitioner used the optical data from Iwasaki’s Table 7 (e.g., radii of curvature, thickness, refractive index) to calculate the focal lengths for the second lens (f2) and third lens (f3) using the standard "lensmaker's equation." The calculated values (f2 = -5.886 mm, f3 = -82.221 mm) and the disclosed value for f1 (2.50 mm) were argued to satisfy the claimed inequality (98.665 > 5.886 > 3.75).
      • Dependent Claims 12-14: Petitioner argued that Iwasaki’s Table 7 explicitly discloses the values needed to meet the limitations of the dependent claims. For claim 12, Iwasaki’s data showed the first lens Abbe number (56.8) is greater than 50 and the second lens Abbe number (21.4) is smaller than 30. For claim 13, Iwasaki's lens shape and positive radii of curvature for the first lens were argued to teach a convex object-side surface, and its figures and data for the second lens taught a meniscus lens with a convex object-side surface. For claim 14, Iwasaki’s disclosed F-number of 2.8 met the limitation of being "smaller than 2.9."

4. Key Claim Construction Positions

  • Petitioner argued for the plain and ordinary meaning of key terms, asserting no special construction was necessary but providing definitions for clarity.
  • "Total Track Length (TTL)": Proposed to mean "the length of the optical axis spacing between the object-side surface of the first lens element and the image plane." Petitioner contended this construction is consistent with the ’712 patent’s specification and well-understood in the art.
  • "Effective Focal Length (EFL)": Proposed to mean "the focal length of a lens assembly." This construction was supported by its common meaning in the field of optics and by extrinsic evidence. These constructions were foundational to comparing the claimed performance metrics with the data disclosed in Iwasaki.

5. Key Technical Contentions (Beyond Claim Construction)

  • A central technical contention was that a prior art reference can anticipate a claim even if it does not explicitly state a claimed value, so long as that value is inherent in the disclosure.
  • Petitioner's argument for anticipation of the focal length relationship 1.2×|f3|>|f2|>1.5×f1 relied on this principle. Petitioner asserted that the focal lengths f2 and f3 of the second and third lenses in Iwasaki's Example 4, while not explicitly listed, were inherently disclosed because a person of ordinary skill in the art (POSITA) could derive them from the provided optical data (surface curvatures, lens thickness, refractive indices) using the well-known lensmaker's equation. The petition included the explicit calculations to demonstrate this.

6. Arguments Regarding Discretionary Denial

  • Petitioner pre-emptively argued against discretionary denial based on redundancy with a co-pending IPR (IPR2018-01146) that also challenged the ’712 patent.
  • The petition asserted it was not redundant because it presented a new primary reference, Iwasaki, which was not used in the co-pending IPR. Furthermore, it presented a different invalidity theory for claim 14, arguing for anticipation under §102 based on Iwasaki, whereas the other IPR argued claim 14 was obvious under §103 over a different combination of references.

7. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1 and 12-14 of the ’712 patent as unpatentable.