PTAB

IPR2021-00637

HP Inc v. Largan Precision Co Ltd

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1. Case Identification

2. Patent Overview

  • Title: Optical Image-Capturing Lens Assembly
  • Brief Description: The ’691 patent relates to an optical image-capturing lens assembly for use in electronic products. The invention describes a system comprising four sequential plastic lens elements with specific refractive powers, surface curvatures (convex/concave), and dimensional relationships, including aspheric surfaces with inflection points on the fourth lens element.

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 disclosed "imaging module 100" renders every limitation of claim 1 obvious. Yin’s module comprises four lenses (101-104), an aperture stop, and an image sensor in the claimed order. Petitioner asserted that Yin explicitly teaches the required refractive powers (first lens positive, second lens negative), the aspheric nature of the third and fourth lenses, and the concave image-side surface of the fourth lens. Furthermore, Petitioner's analysis showed that Yin's fourth lens has the claimed inflection points. The final limitations, which define numerical ratios for lens system dimensions (0.35<Yc1/ImgH<0.95 and 0.70<SL/TTL<1.20), were allegedly met by modeling Yin’s Example 2 in optical design software, which yielded results squarely within the claimed ranges.
    • Motivation to Combine (for §103 grounds): As a single-reference ground, the motivation was inherent in Yin's disclosure. Petitioner contended that Yin provides a complete lens assembly design that a person of ordinary skill in the art (POSITA) would directly recognize as containing all the elements of the claimed invention, making it obvious to arrive at the configuration of claim 1.

Ground 2: Claims 21-23 and 25-26 are obvious over Yin in view of Shinohara

  • Prior Art Relied Upon: Yin (Application # 2010/0165484) and Shinohara (Patent 7,443,611).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Yin's lens assembly discloses all features of these dependent claims except for the total axial length (TTL) recited in claim 21 (1.80 mm < TTL < 3.20 mm). The calculated TTL for Yin's Example 2 was approximately 6.64 mm, falling outside this range. The remaining dependent claims add limitations (e.g., specific surface shapes, refractive powers, Abbe number relations) that Petitioner asserted were already present in Yin’s design.
    • Motivation to Combine (for §103 grounds): A POSITA would combine the teachings because both Yin and Shinohara address the need for compact, high-resolution lens assemblies for small electronic devices like mobile phones. Shinohara discloses a similar four-lens design that is significantly more compact, with a TTL of only 1.32 mm. This teaching of extreme miniaturization would have motivated a POSITA to scale down the dimensions of Yin’s otherwise suitable design to meet the market-driven demand for smaller components, thereby arriving at a TTL within the range claimed.
    • Expectation of Success: Petitioner asserted that scaling the dimensions of a lens design is a routine, well-understood, and predictable process in optical engineering, often automated in software. A POSITA would have a high expectation of success that scaling Yin's design to a smaller size, as suggested by Shinohara's compact example, would preserve the design's fundamental optical properties and predictably result in a functional, smaller lens assembly meeting the claimed TTL.

Ground 3: Claims 21-24 are obvious over Taniyama in view of Shinohara

  • Prior Art Relied Upon: Taniyama (European Application # EP2015121A2) and Shinohara (Patent 7,443,611).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground presented a similar scaling argument, starting with Taniyama as the primary reference. Petitioner contended that Taniyama’s Example 1 discloses a four-lens assembly meeting the structural and optical requirements of claims 21-24, but with a TTL of 7.22 mm, which is larger than the claimed range.
    • Motivation to Combine (for §103 grounds): The motivation was identical to the previous ground. A POSITA seeking to "downsize the whole of the imaging apparatus," as Taniyama itself suggests, would look to analogous designs like Shinohara. Shinohara's highly compact lens (with a TTL that is only 18.2% of Taniyama's) provides a clear reason and guide for a POSITA to scale down the Taniyama design to achieve the required miniaturization for modern electronic devices.
    • Expectation of Success: As scaling is a fundamental and predictable technique in lens design, a POSITA would have been confident that reducing the dimensions of Taniyama's assembly would successfully yield a smaller, functional lens system that meets the claimed TTL limitation without undue experimentation.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 1 is obvious over Shinohara alone, and that claims 21-23 and 25-27 are obvious over Shinohara in view of Yin, relying on similar scaling and design modification theories.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under Fintiv by highlighting that the parallel district court litigation was in its preliminary stages. Key factors cited included the absence of a trial date, the uncertainty of the litigation schedule due to a pending motion to transfer, and travel restrictions impacting key parties. To further mitigate concerns of inefficiency and overlap, Petitioner stipulated that if the inter partes review (IPR) was instituted, it would not pursue the same unpatentability grounds in the district court.

5. Relief Requested

  • Petitioner requests institution of an IPR and cancellation of claims 1 and 21-27 of Patent 8,395,691 as unpatentable.