Motorola Mobility LLC v. Largan Precision Co Ltd

1. Case Identification

• Case #: IPR2024-00689
• Patent #: 9,366,845
• Filed: July 1, 2024
• Petitioner(s): Motorola Mobility LLC
• Patent Owner(s): Largan Precision Co., Ltd.
• Challenged Claims: 1-34

2. Patent Overview

• Title: Photographing Optical Lens Assembly, Image Capturing Unit and Electronic Device
• Brief Description: The ’845 patent describes a seven-element optical lens assembly for photography. The invention is directed to a specific arrangement of lenses with defined refractive powers and geometric properties for the sixth and seventh lenses, particularly the location of non-axial critical points on their image-side surfaces, which are claimed to improve image quality.

3. Grounds for Unpatentability

Ground 1: Obviousness over Fukaya and POSITA Knowledge - Claims 1-14, 16-27, 30, and 32-34 are obvious over Fukaya in view of the knowledge of a Person of Ordinary Skill in the Art (POSITA).

• Prior Art Relied Upon: Fukaya (Application # 2014/0139719).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fukaya disclosed a seven-element lens system that met nearly all limitations of the challenged claims. Fukaya taught the same general arrangement of seven lenses with the required positive and negative refractive powers. It also disclosed a "gullwing" seventh lens with an aspheric shape that changes from concave to convex, satisfying limitations related to that lens. However, Petitioner contended that Fukaya's sixth lens did not have a gullwing-shaped image-side surface (it was convex, not concave, in the paraxial region), and therefore did not meet the claimed condition relating the vertical distance of the critical points of the sixth and seventh lenses (the Yc62/Yc72 ratio).
  • Motivation to Combine: Petitioner asserted that a POSITA would combine the teachings of Fukaya with the common knowledge in the art to modify Fukaya’s sixth lens to also have a gullwing shape, creating a "double-gullwing" lens pair. By the patent's 2014 priority date, this was a well-known and desirable design trend used to improve off-axis field corrections, reduce the optical burden on the seventh lens, and better control the chief ray angle. This modification would predictably improve illumination across the image plane and allow for higher resolution. Fukaya itself recognized the benefits of aspheric sixth and seventh lenses for aberration control, motivating a POSITA to seek further improvements using known techniques.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in making this modification. The change represented a straightforward application of an incremental, iterative design process using standard software like Zemax. Implementing a well-understood meniscus-gullwing lens pair configuration into a suitable starting design like Fukaya was a predictable optimization to achieve known benefits.

Ground 2: Obviousness over Cai and POSITA Knowledge - Claims 1-4, 7, 9-13, 15-16, 18-21, 23-24, and 28-31 are obvious over Cai in view of the knowledge of a POSITA.

• Prior Art Relied Upon: Cai (Chinese Patent Grant No. CN 202886720 U).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Cai disclosed a seven-element optical imaging system that also satisfied most of the challenged claim limitations. Cai taught the use of aspherical surfaces and inflection points to correct aberrations and disclosed a gullwing seventh lens with a non-axial critical point satisfying the claimed Yc72/f condition. As with Fukaya, Cai’s sixth lens had an object-side gullwing surface but did not have a gullwing image-side surface, thus failing to meet the limitations requiring that surface to be concave in the paraxial region and the related Yc62/Yc72 ratio.
  • Motivation to Combine: The motivation presented was identical to that in Ground 1. A POSITA would have been motivated to implement the known benefits of a double meniscus-gullwing lens pair into the Cai design. This modification would further Cai’s own stated goals of correcting aberrations, reducing the incident light angle, and achieving a compact size. The rapid developments in compact lens design between the filing of Cai and the priority date of the ’845 patent established the clear advantages of using gullwing shapes for both the sixth and seventh lenses.
  • Expectation of Success: A POSITA would have had a high expectation of success because the modification was an incremental optimization using a known technique to achieve predictable results. Petitioner asserted that a POSITA would have selected the 8th embodiment of Cai as a starting point, as its sixth lens had a weaker refractive power, making the modification of its surface curvature easier to implement and balance within the overall system.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not discretionarily deny the petition under 35 U.S.C. § 325(d). The petition asserted that the Examiner made material errors during prosecution by overlooking the specific teachings relied upon in the petition.
• Although Fukaya was listed on an IDS, its teachings regarding an obvious modification with a double-gullwing lens pair were never considered. Similarly, while a family member of Cai was reviewed, the Examiner failed to consider its implementation with known gullwing design forms as proposed in the petition.
• Petitioner also noted that no parallel U.S. District Court litigation involving the ’845 patent exists, making discretionary denial under 35 U.S.C. § 314(a) and the Fintiv factors inapplicable.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-34 of Patent 9,366,845 as unpatentable.