PTAB

IPR2020-00878

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 ’897 patent is directed to a compact telephoto optical lens assembly for portable electronic devices. The assembly includes five lens elements and is characterized by a total track length to effective focal length ratio (TTL/EFL) of less than 1.0.

3. Grounds for Unpatentability

Ground 1: Anticipation over Ogino - Claims 1, 4, 9-15, 17, 20, and 25-29 are anticipated under 35 U.S.C. §102 by Ogino.

  • Prior Art Relied Upon: Ogino (Patent 9,128,267).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ogino’s Example 5 embodiment, a five-lens imaging system for portable devices, discloses every limitation of independent claims 1 and 17. Ogino taught a lens assembly with five elements arranged in two groups, a TTL of 5.273 mm, and an EFL of 5.956 mm, yielding a TTL/EFL ratio of 0.8853 (< 1.0). Petitioner asserted that Ogino’s detailed optical data tables and figures explicitly disclosed or made inherent the required lens powers (positive/negative), lens groupings, inter-lens gaps, and material properties (e.g., Abbe numbers) recited in the claims. The analysis for numerous dependent claims relied on direct calculations from Ogino's disclosed prescription data.

Ground 2: Obviousness over Ogino and Bareau - Claims 2, 5, 6, 18, and 21-23 are obvious over Ogino in view of Bareau.

  • Prior Art Relied Upon: Ogino (Patent 9,128,267) and Bareau ("The optics of miniature digital camera modules," 2006).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed claims requiring a low f-number (F#<2.9). Petitioner argued that while Ogino’s Example 5 disclosed the core lens structure, its F# of 3.94 was outside the claimed range. Bareau, however, taught typical design specifications for cell phone camera modules, including a preference for "faster" lenses with a low F# of 2.8 or less to improve performance in low-light conditions and for use with smaller image sensors.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Bareau's teaching of a desirable low F# with Ogino's lens design to create a more commercially competitive product. The need for faster lenses with better light-gathering capabilities was a well-known objective in the field of miniature cameras.
    • Expectation of Success: Petitioner contended that modifying Ogino's design to achieve the lower F# taught by Bareau would have been a routine and predictable optimization. A POSITA would use standard lens design software to increase the diameter of the entrance aperture, which predictably lowers the F# while maintaining the overall structural design and performance characteristics of Ogino's system.

Ground 3: Obviousness over Chen, Iwasaki, and Beich - Claims 16 and 30 are obvious over Chen in view of Iwasaki, further in view of Beich.

  • Prior Art Relied Upon: Chen (Patent 10,324,273), Iwasaki (Patent 9,678,310), and Beich ("Polymer Optics: A manufacturer's perspective," 2010).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground targeted claims 16 and 30, which require a specific ratio between the center thickness (L11) and edge thickness (L1e) of the first lens element (L11/L1e < 3). Petitioner asserted that Chen taught a five-lens assembly similar to the claimed invention but with a TTL slightly outside the claimed range. Iwasaki taught that a system’s TTL could be reduced by using thinner components, such as a thinner IR filter. The combination of Chen and Iwasaki resulted in a lens system meeting the claimed TTL. Beich then taught "rules of thumb" for manufacturing polymer optics, explicitly disclosing that a center-to-edge thickness ratio of less than 3:1 is desirable to ensure manufacturability and avoid molding challenges.
    • Motivation to Combine: A POSITA would combine Chen and Iwasaki to satisfy the persistent demand for miniaturization in mobile devices by reducing the overall lens track length. A POSITA would then apply the manufacturing constraints taught by Beich to the Chen/Iwasaki design, as Chen's small aspheric lenses were ideal for polymer injection molding. This would lead a designer to select lens parameters, such as diameter, to ensure the manufacturable <3:1 thickness ratio was maintained.
    • Expectation of Success: Petitioner argued the combination was predictable. Swapping for a thinner filter as taught by Iwasaki was a simple substitution. Applying Beich's well-known manufacturing rule to Chen’s design was a routine step to ensure cost-effective production and would have predictably resulted in a lens meeting the <3:1 ratio.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 3) for claims 3, 8, 19, and 24 based on Ogino in view of Bareau, further in view of Kingslake (a 1992 optics textbook). Kingslake was used to reinforce the general motivation in the art to design "faster" lenses with lower f-numbers.

4. Key Claim Construction Positions

  • Effective Focal Length (EFL): Petitioner relied on the Board's prior construction from a related case: "the focal length of a lens assembly."
  • Total Track Length (TTL): Petitioner relied on the Board's prior construction: "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."

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-6 and 8-30 of the ’897 patent as unpatentable.