Motorola Mobility LLC v. Largan Precision Co Ltd

1. Case Identification

• Case #: IPR2022-01023
• Patent #: 8,310,767
• Filed: June 8, 2022
• Petitioner(s): Motorola Mobility LLC
• Patent Owner(s): Largan Precision Co., Ltd.
• Challenged Claims: 16-20 and 22-24

2. Patent Overview

• Title: Image Capturing Lens Assembly
• Brief Description: The ’767 patent relates to a miniature, six-element image capturing lens assembly for use in compact electronic devices like cellphones. The specific arrangement of the six lenses is purported to reduce photosensitivity and the overall total track length (TTL) of the assembly.

3. Grounds for Unpatentability

Ground 1: Obviousness over Sano and POSITA Knowledge - Claims 16-20 and 22-24 are obvious over Sano in view of the knowledge of a POSITA.

• Prior Art Relied Upon: Sano (Application # 2010/0220229) and general knowledge of a person of ordinary skill in the art (POSITA) regarding lens design.
• Core Argument for this Ground:
  • Prior Art Mapping: Sano disclosed a five-element lens system that met many of the structural and conditional constraints of the challenged claims. The key difference was the number of lens elements. Petitioner argued that Sano’s second lens (L2) had a relatively strong refractive power, leading to large angles of incidence that increased aberrations and reduced manufacturing tolerances. The resulting modified six-lens system, with the original L2 split into a new second (L2A) and third (L2B) lens, allegedly satisfied all limitations of independent claim 16, including the sequence of six lenses with specified refractive powers, surface curvatures, and aspheric properties. Dependent claims were met by the inherent properties of Sano’s original design or the natural results of the lens-splitting modification.
  • Motivation to Combine: A POSITA would have been motivated to modify Sano’s five-lens system into a six-lens system by splitting the highly-powered second lens (L2). This was a common and well-known technique used by lens designers to reduce aberrations, improve image quality, and increase manufacturing yields by making tolerances more achievable. Sano’s design, being a high-speed, wide-angle lens system, was a prime candidate for this routine optimization.
  • Expectation of Success: A POSITA would have had a high expectation of success because lens-splitting was a predictable and fundamental technique in optical design. The outcome of reducing aberrations by distributing optical power across two elements was well-understood and readily modeled with standard software like ZEMAX.

Ground 2: Obviousness over KR357 and POSITA Knowledge - Claims 16-20 and 22-24 are obvious over KR357 in view of the knowledge of a POSITA.

• Prior Art Relied Upon: KR357 (Korean Application # 10-2010-0040357) and general POSITA knowledge.
• Core Argument for this Ground:
  • Prior Art Mapping: KR357 disclosed a six-element imaging lens system that was structurally similar to the claimed invention. However, Petitioner argued a POSITA would have made several routine and predictable optimizations to adapt KR357 for a typical cellphone camera application, which would result in the claimed invention. Key modifications included: (1) optimizing the lens curvatures of the first/second and fifth/sixth lens doublets to correct for chromatic aberrations, which would predictably and naturally result in the fifth lens having positive refractive power (as claimed) instead of the negative power disclosed in KR357; (2) moving the aperture stop to the front of the lens system to improve off-axis performance; and (3) reducing the lens thicknesses and air gaps to shorten the TTL to a more compact length suitable for modern smartphones.
  • Motivation to Combine: A POSITA would combine the teachings of KR357 with routine optimization techniques for several reasons. The primary motivations were to improve image quality by reducing chromatic aberrations, achieve a more compact design by shortening the TTL, improve performance across a wide field of view by repositioning the aperture stop, and reduce manufacturing costs by using plastic for aspheric lenses. These were all standard design goals for miniature camera modules at the time.
  • Expectation of Success: The proposed modifications were all standard, well-documented optimization steps in the lens design process. A POSITA using common design software would have routinely performed such optimizations with a high and predictable expectation of success in achieving a more compact, higher-performance lens system.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on Fintiv factors would be inappropriate. The parallel district court litigation was in its early stages, with no trial date set and minimal investment of court resources. Petitioner also stipulated that it would not pursue in the district court any grounds raised or that reasonably could have been raised in the IPR. Consequently, Petitioner contended the Fintiv factors weighed heavily against denial, promoting efficient resolution of the patentability challenge at the PTAB.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 16-20 and 22-24 of Patent 8,310,767 as unpatentable.