PTAB

IPR2023-00472

Apple Inc v. ImmerVision Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Miniature Wide-Angle Imaging Lens
  • Brief Description: The ’120 patent discloses miniature wide-angle imaging lenses for consumer devices. The invention is directed to achieving a low miniaturization ratio (total track length divided by image circle diameter) of less than 3.0 while maintaining image quality by using a non-linear targeted resolution to compensate for drops in relative illumination or modulation transfer function (MTF) in certain zones of the image.

3. Grounds for Unpatentability

Ground 1: Claims 1-7 are unpatentable under 35 U.S.C. §§ 102/103 over Thibault.

  • Prior Art Relied Upon: Thibault (S. Thibault et al., Design, fabrication and test of miniature plastic panomorph lenses with 180° field of view, Proceedings of SPIE, 2014).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Thibault, a paper co-authored by four of the six named inventors of the ’120 patent, anticipates or renders obvious all challenged claims. Thibault described a miniature panomorph lens with a 180° field of view, a total track length of 3.80 mm, and an image circle diameter of 2.01 mm, resulting in a miniaturization ratio of 1.89 (less than the claimed <3.0 and <2.0). Thibault’s lens design used "targeted distortion to increase the number of pixels in the zone of interest," directly corresponding to the "non-linear targeted resolution" of claim 1. Petitioner asserted that Thibault’s resolution curve (Fig. 6) inherently compensates for relative illumination drops, similar to the ’120 patent, and shows a "change of direction" (claim 3) at approximately 60°.
    • Motivation to Combine (for §103 grounds): For claim 2’s "constant image quality" limitation, Petitioner argued a POSITA would have been motivated to apply known industry guidelines to control image quality, a standard design goal. For claim 3, if the 60° change of direction was not considered "near an edge," a POSITA would have been motivated to modify the lens based on Thibault’s other teachings (Fig. 3) to move the peak resolution closer to the 80-90° range to optimize for use cases like video chat.
    • Expectation of Success: A POSITA would have had a high expectation of success in making any modifications, as Thibault provided sufficient design parameters and teachings for a person skilled in optical design.

Ground 2: Claims 1 and 3-6 are obvious under 35 U.S.C. §103 over Matsusaka.

  • Prior Art Relied Upon: Matsusaka (Application # 2010/0194853).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Matsusaka, which disclosed a compact wide-angle optical system with a view of 180° or more, rendered the claims obvious. Using optical design data from Matsusaka’s Example 19, Petitioner’s expert modeled the lens in Zemax software. The model demonstrated a miniaturization ratio of ~2.5, satisfying the <3.0 limitation. The Zemax analysis produced an "image distribution curve" that deviated from a linear reference, creating zones of higher and lower object-to-image magnification. This corresponded to the "non-linear targeted resolution" of claim 1. The model also showed a chief-ray angle of 26.8° (>20°, claim 4) and that the first lens element was preferably made of glass (claim 6).
    • Motivation to Combine: Matsusaka described using its lenses in an "onboard camera for monitoring rear view of a vehicle." Petitioner argued a POSITA would have been motivated to intentionally utilize the inherent non-linear magnification to enhance resolution in critical areas of the image (e.g., where obstacles are likely to appear) while reducing it in less critical areas, a known design trade-off.
    • Expectation of Success: A POSITA using standard optical design tools like Zemax would have readily understood the optical properties of Matsusaka's disclosed lens and would have been able to intentionally implement the non-linear resolution for a specific application with a high expectation of success.

Ground 3: Claims 1, 4, 5, and 7 are obvious under 35 U.S.C. §103 over Kim.

  • Prior Art Relied Upon: Kim (Korean Patent No. 100677055B1).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kim, which disclosed a "compact super-wide angle optical system," rendered the claims obvious. Kim’s first embodiment expressly taught a miniaturization ratio (TTL/2Y) of 1.9189, satisfying the <3.0 (claim 1) and <2.0 (claim 7) limitations. It also taught a total field of view of 144° (>100°). Petitioner’s expert modeled Kim’s lens in Zemax, which showed a non-linear image distribution curve with zones of varying magnification and a chief ray angle of 23.4° (>20°, claim 4).
    • Motivation to Combine: Kim stated its lens is used in "surveillance cameras for vehicles." Similar to the Matsusaka ground, Petitioner argued a POSITA would have been motivated to intentionally leverage the lens's inherent non-linear resolution to improve performance for this specific application by increasing magnification in more important zones of the image.
    • Expectation of Success: The detailed parameters provided in Kim, combined with a POSITA’s ability to use optical design software, would have provided a clear path and a high expectation of success in optimizing the disclosed lens design for its intended purpose.

4. Key Claim Construction Positions

  • Intended Use Language: Petitioner argued that the limitation in claim 1 reciting "the lower or higher object to image magnification being used to compensate, at least in part, for a lower image quality..." constitutes non-limiting intended use language. Petitioner contended this phrase describes the purpose or result of the structure rather than defining the structure itself. Therefore, this language should not be given patentable weight, and the claim should be met if the prior art discloses the structure that inherently performs this function.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate. The petition asserted it presents compelling evidence of unpatentability. Furthermore, the parallel district court litigation (ImmerVision, Inc. v. Apple, Inc., D. Del.) was in an early stage, with claim construction yet to be briefed. Petitioner argued that the PTAB’s Final Written Decision (FWD) would issue in July or August 2024, at least two months before the scheduled October 2024 trial date, eliminating any overlap and promoting judicial efficiency.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-7 of the ’120 patent as unpatentable.