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

1. Case Identification

• Case #: IPR2020-01345
• Patent #: 8,395,691
• Filed: July 22, 2020
• Petitioner(s): Ability Opto-Electronics Technology Co., Ltd.
• Patent Owner(s): Largan Precision Co., Ltd.
• Challenged Claims: 1, 21-27

2. Patent Overview

• Title: Optical Image-Capturing Lens Assembly
• Brief Description: The ’691 patent describes an optical image-capturing lens assembly for use in electronic products. The assembly comprises four lens elements arranged in order from an object side to an image side, with specific refractive powers, surface shapes (including aspheric surfaces), and dimensional properties designed for compact, high-resolution imaging applications.

3. Grounds for Unpatentability

Ground 1: Claim 1 is obvious over Yin

• Prior Art Relied Upon: Yin (Application # 2010/0165484).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Yin’s Example 2 discloses an imaging module that meets every limitation of claim 1. This disclosure includes an optical lens assembly comprising four lens elements in sequence with the claimed refractive power scheme (positive, negative, positive, negative). Yin was asserted to teach a third lens element with aspheric object-side and image-side surfaces and a fourth lens element with a concave image-side surface, aspheric surfaces, and at least one inflection point. Furthermore, Yin allegedly discloses the required stop positioned between the first and second lens elements and an electronic sensor at the image plane. Petitioner contended that modeling Yin's disclosed optical data in ZEMAX software confirms that the final dimensional and relational limitations of claim 1 are satisfied.

Ground 2: Claim 1 is obvious over Shinohara

• Prior Art Relied Upon: Shinohara (Patent 7,443,611).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Shinohara’s Embodiment 2, independent of any other reference, renders claim 1 obvious. Shinohara allegedly discloses an imaging lens with four lens elements in the claimed order and with the same positive/negative refractive power sequence. Petitioner mapped Shinohara's teachings to the claim limitations for aspheric surfaces on the third and fourth lenses, a concave image-side surface and inflection points on the fourth lens, a diaphragm (stop) between the first and second lenses, and an imaging element (electronic sensor). Similar to the argument for Yin, Petitioner relied on modeling Shinohara's disclosed optical data to demonstrate that the specific numerical relations recited in claim 1 are met.

Ground 3: Claims 21-23 and 25-26 are obvious over Yin in view of Shinohara

• Prior Art Relied Upon: Yin (Application # 2010/0165484), Shinohara (Patent 7,443,611).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Yin’s Example 2 discloses every feature of the challenged dependent claims except for the required total track length (TTL) range recited in claim 21 (1.80 mm < TTL < 3.20 mm). Yin’s disclosed TTL was calculated to be approximately 6.64 mm.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would have been motivated to modify Yin’s design to achieve a smaller overall length. Both Yin and Shinohara teach that a key objective for lens assemblies in compact electronic devices, such as mobile phones, is miniaturization. Shinohara discloses a lens assembly with a similar four-lens structure but a significantly smaller TTL (approx. 1.32 mm). A POSITA would therefore look to the smaller design of Shinohara and recognize that Yin’s larger design could be scaled down to meet the market demand for smaller components. Petitioner argued that scaling Yin's design by 37% would result in a TTL of 2.46 mm, falling squarely within the claimed range.
  • Expectation of Success: The process of scaling a geometric lens design is a well-known, routine, and predictable technique in optical engineering. A POSITA would know that scaling all dimensions by a common ratio preserves the fundamental optical properties (like refractive powers and f-number) while achieving a target size, and modern optical design software automates this process. Therefore, a POSITA would have had a high expectation of success in scaling Yin's design to achieve a smaller TTL without undue experimentation.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds that claims 21-23 and 25-27 are obvious over Shinohara in view of Yin (arguing for scaling up Shinohara's design) and that claims 21-24 are obvious over Taniyama (EP2015121A2) in view of Shinohara (arguing for scaling down Taniyama's design based on the same miniaturization rationale).

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §314(a), asserting that the parallel district court proceeding is in a very early stage. Petitioner noted that the trial timeline is uncertain and likely to be significantly delayed due to a pending motion to transfer and COVID-related travel restrictions impacting key parties. Key litigation milestones, such as a Markman hearing and substantive depositions, had not yet occurred. To avoid overlap, Petitioner also stipulated that it would not pursue the same invalidity grounds in the district court if the IPR were instituted.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1 and 21-27 of the ’691 patent as unpatentable.