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

1. Case Identification

• Case #: IPR2020-01545
• Patent #: 9,146,378
• Filed: August 28, 2020
• Petitioner(s): Ability Opto-Electronics Technology Co., Ltd.
• Patent Owner(s): Largan Precision Co., Ltd.
• Challenged Claims: 1–6, 8, 11, 13, and 15

2. Patent Overview

• Title: Image Capturing Lens Assembly, Image Capturing Device and Mobile Terminal
• Brief Description: The ’378 patent discloses a compact, three-element image capturing lens assembly, typically for use in mobile devices like smartphones. The invention is characterized by a specific arrangement of three aspheric lens elements with positive, positive, and negative refractive powers, respectively, and a set of conditional expressions defining their geometric and optical relationships to achieve a high-quality image in a small form factor.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1–6, 8, 11, 13, and 15 over Matsuo

• Prior Art Relied Upon: Matsuo (Patent 6,970,306).
• Core Argument for this Ground: Petitioner argued that the Examiner erred during prosecution by overlooking the specific disclosures of Example 14 in Matsuo. Petitioner asserted that this single example explicitly teaches every limitation of independent claims 1 and 8, including the specific conditional expressions that the Examiner previously determined were not met by the prior art of record. For the remaining dependent claims, Petitioner contended that a person of ordinary skill in the art (POSITA) would have found it obvious to make routine, predictable modifications to the lens system of Matsuo's Example 14 to meet the claimed limitations.
  • Prior Art Mapping: Petitioner alleged that Matsuo’s Example 14 discloses a three-lens system with the claimed positive-positive-negative refractive power structure. The mapping detailed that Matsuo’s first lens is biconvex and aspheric (meeting claim 1a), its second lens has the claimed concave object-side and convex image-side surfaces and is aspheric (meeting claim 1b), and its third lens has the claimed surface shapes and is aspheric (meeting claim 1c). Crucially, Petitioner provided calculations based on data tables in Matsuo to show that all five conditional expressions of claim 1e and all three conditional expressions of claim 8e are explicitly satisfied by Example 14.
  • Motivation to Modify: For dependent claims not directly met by Example 14, Petitioner argued a POSITA would be motivated to modify Matsuo’s design. For claim 5 (field of view), the motivation was to use a larger sensor to capture a wider scene, a known technique to increase the field of view (FOV). For claims 6 and 15 (total track length), the motivation was to scale down the entire lens assembly to support a smaller sensor, directly aligning with Matsuo’s stated goal of miniaturization. For claim 13 (f-number), the motivation was to increase the entrance pupil diameter to improve light-gathering ability for low-light conditions, a common design tradeoff.
  • Expectation of Success: Petitioner asserted that modifying lens parameters such as scale, FOV, and f-number were common and well-understood practices in optical design. A POSITA would have used standard lens design software to implement these changes with a high and reasonable expectation of success, yielding predictable results without undue experimentation.

Ground 2: Obviousness of Claims 1–6 over Kawasaki

• Prior Art Relied Upon: Kawasaki (WO 2013/145989 A1).
• Core Argument for this Ground: Petitioner argued that Embodiment 1 of Kawasaki discloses a nearly identical three-lens assembly that meets almost all limitations of claim 1. For the few parameters falling just outside the claimed ranges, a POSITA would have found it obvious to make slight, predictable adjustments based on known manufacturing tolerances or to achieve Kawasaki’s own stated goal of miniaturization. For claim 2, Petitioner contended that modifying the shape of the third lens would have been an obvious design choice, as demonstrated by other embodiments within Kawasaki itself.
  • Prior art Mapping: Kawasaki's Embodiment 1 was shown to disclose the claimed three-lens structure with positive-positive-negative refractive power and the specified surface shapes for the first and second lenses. Petitioner argued that while Kawasaki's calculated ratio of central thicknesses (CT2/CT1) was 0.856, just outside the claimed range of <0.85, a POSITA would know this was within typical manufacturing tolerances (+/- 0.010 mm). A slight, acceptable reduction in the thickness of the second lens would bring the ratio within the claimed range. For claim 2, Kawasaki's third lens object-side surface is slightly concave, not convex as claimed. However, Petitioner pointed to Kawasaki's Embodiment 9, which discloses the claimed convex surface shape, arguing it was an obvious, interchangeable design choice.
  • Motivation to Modify: The primary motivation to modify Kawasaki's Embodiment 1 was to further the stated goal of miniaturization. Reducing the central thickness of the second lens was presented as a direct and obvious way to achieve this goal. For the third lens shape in claim 2, the motivation was to explore a finite number of known, predictable design solutions, with Kawasaki’s own disclosure of an alternative embodiment (Embodiment 9) providing the blueprint and rationale for such a modification.
  • Expectation of Success: Petitioner asserted that a POSITA would understand that a minor reduction in a lens's central thickness or a change in a surface from slightly concave to convex would have a predictable and manageable impact on the overall optical performance. Such adjustments are routine in the final stages of lens design optimization, and a POSITA would have a reasonable expectation of achieving the claimed configuration while maintaining functionality.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a), noting that the parallel district court case was in a very early stage. Key factors cited included the absence of a trial date, the pendency of a motion to transfer that would cause significant delays, and the fact that discovery was minimal. Petitioner also stipulated that it would not pursue the same invalidity grounds in the district court if the IPR was instituted, thereby eliminating concerns of duplicative efforts and inconsistent results.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1–6, 8, 11, 13, and 15 of the ’378 patent as unpatentable.