Ability Opto Electronics Technology Co Ltd v. Largan Precision Co Ltd

1. Case Identification

• Case #: IPR2020-01339
• Patent #: 8,988,796
• Filed: July 21, 2020
• Petitioner(s): Ability Opto-Electronics Technology Co., Ltd.
• Patent Owner(s): Largan Precision Co., Ltd.
• Challenged Claims: 1-11 and 15-25

2. Patent Overview

• Title: Image Capturing Lens System, Imaging Device and Mobile Terminal
• Brief Description: The ’796 patent relates to a compact image capturing lens system applicable to mobile terminals. The invention describes a four-element lens structure designed to meet the demand for smaller optical systems driven by sensor miniaturization in mobile devices.

3. Grounds for Unpatentability

Ground 1: Obviousness over Yu - Claims 1-11 and 15-25 are obvious over Yu.

• Prior Art Relied Upon: Yu (Patent 9,097,860).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that its own prior art patent, Yu, renders the challenged claims obvious. Yu discloses a compact, wide-angle, four-piece imaging lens assembly with features that directly map onto the limitations of the ’796 patent’s independent claims. Specifically, Petitioner asserted Yu teaches a lens system comprising, in order from an object side to an image side:
    • A first lens element with positive refractive power.
    • A second lens element with positive refractive power and a convex image-side surface.
    • A third lens element with negative refractive power, a concave object-side surface, and a convex image-side surface.
    • A fourth lens element with positive refractive power, a concave image-side surface, and aspheric object-side and image-side surfaces.
  • Motivation to Combine (for §103 grounds): This ground is based on a single reference. However, for claims with limitations not explicitly met (e.g., claim 5's f-number range), Petitioner argued for an obvious modification. A Person of Ordinary Skill in the Art (POSITA) would have been motivated to adjust the size of the entrance pupil in Yu's design to increase the lens system’s light-gathering ability, a common and predictable design trade-off.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success in modifying Yu’s f-number, as it involved applying a known technique (adjusting aperture size) to achieve a predictable result (improved light gathering within a specific f-number range), which is a routine task for lens designers.

Ground 2: Obviousness over Yamaguchi in view of Yu - Claims 1-11, 15-16, and 19-24 are obvious over Yamaguchi in view of Yu.

• Prior Art Relied Upon: Yamaguchi (Application # 2004/0012861) and Yu (Patent 9,097,860).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Yamaguchi discloses a four-lens pickup lens with a configuration of lens elements, refractive powers, and surface shapes that is structurally very similar to that claimed in the ’796 patent. However, Yamaguchi’s disclosed embodiments are physically larger than the dimensions required by the claims. Yu, in contrast, discloses a similar but more compact four-lens system designed for smaller modern sensors.
  • Motivation to Combine (for §103 grounds): A POSITA would combine the teachings by scaling down Yamaguchi's design to meet the modern trend of miniaturization exemplified by Yu. Petitioner asserted that both references expressly acknowledge the industry-wide trend toward smaller sensors requiring smaller lens assemblies. A POSITA, seeking to create a compact lens system, would naturally look to an existing, well-characterized design like Yamaguchi and apply the routine and well-understood technique of scaling to adapt it for a smaller sensor, as taught by the general knowledge in the art and demonstrated by Yu.
  • Expectation of Success (for §103 grounds): Scaling a lens design is a common, predictable, and often software-assisted process in optical engineering. A POSITA would have a high expectation of success in scaling all dimensions of Yamaguchi's lens assembly by a constant factor to achieve the smaller axial distances required by the claims, while preserving the essential optical properties of the design.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a), asserting that the parallel district court proceeding was in its earliest stages. Key factors cited included the lack of a trial date, minimal discovery, and a pending motion to transfer that would significantly delay the court timeline. Petitioner also stipulated that it would not pursue in the district court the same invalidity grounds raised in the IPR petition, thereby eliminating any risk of duplicative efforts or inconsistent results.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-11 and 15-25 of the ’796 patent as unpatentable.