Corephotonics, Ltd. v. Apple Inc. ( 2021 )

Case: 20-1961 Document: 66 Page: 1 Filed: 10/25/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
COREPHOTONICS, LTD.,
Appellant
v.
APPLE INC.,
Appellee
ANDREW HIRSHFELD, PERFORMING THE
FUNCTIONS AND DUTIES OF THE UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND DIRECTOR OF
THE UNITED STATES PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________
2020-1961
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2019-
00030.
______________________
Decided: October 25, 2021
______________________
MARC AARON FENSTER, Russ August & Kabat, Los An-
geles, CA, argued for appellant. Also represented by NEIL
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2 COREPHOTONICS, LTD. v. APPLE INC.
RUBIN, JAMES S. TSUEI.
ANGELA OLIVER, Haynes and Boone, LLP, Washington,
DC, argued for appellee. Also represented by ANDREW S.
EHMKE, DEBRA JANECE MCCOMAS, Dallas, TX; DAVID W.
O'BRIEN, Austin, TX; MICHAEL SCOTT PARSONS, Plano, TX.
ROBERT MCBRIDE, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, for interve-
nor. Also represented by THOMAS W. KRAUSE, MONICA
BARNES LATEEF, FARHEENA YASMEEN RASHEED.
______________________
Before TARANTO, HUGHES, and STOLL, Circuit Judges.
TARANTO, Circuit Judge.
This case is closely related to Corephotonics Ltd. v. Ap-
ple Inc., No. 20-1424 (Fed. Cir.), which involves Corepho-
tonics Ltd.’s U.S. Patent No. 9,402,032 and which we
decide today in an opinion (20-1424 Decision) on which we
rely here. The present case involves Corephotonics’s U.S.
Patent No. 9,857,568, which issued from a second-genera-
tion continuation-in-part of the application that became
the ’032 patent, and which describes (as its title states) a
“miniature telephoto lens assembly” for use in cell phones.
Apple Inc. petitioned the Patent and Trademark Office
(PTO) for an inter partes review of the ’568 patent, con-
tending that all five claims are unpatentable because their
subject matter would have been obvious based on (1) U.S.
Patent No. 9,128,267 (Ogino) or (2) a combination of Ogino
and a paper by William S. Beich and Nicholas Turner—
Polymer Optics: A Manufacturer’s Perspective on the Fac-
tors That Contribute to Successful Programs, SPIE Pro-
ceedings Vol. 7788, Polymer Optics Design, Fabrication,
and Materials (August 12, 2010) (Beich). The primary is-
sue here is common to this matter and the matter resolved
in our 20-1424 Decision: whether Figure 6 of Ogino de-
scribes a lens assembly that has a total track length (TTL)
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COREPHOTONICS, LTD. v. APPLE INC. 3
less than the effective focal length (EFL). The secondary
issue here, unique to this matter, is whether a relevant ar-
tisan would have been motivated to select a specific rule
taught in Beich and implement it in the Ogino lens assem-
bly.
The PTO’s Patent Trial and Appeal Board determined
that all five claims of the ’568 patent are unpatentable un-
der 35 U.S.C § 103 for obviousness: claims 1–4 based on
Ogino alone, and claims 1–5 based on Ogino in combination
with Beich. Apple Inc. v. Corephotonics Ltd., IPR2019-
00030, 2020 WL 1696140 (P.T.A.B. Apr. 6, 2020) (Board
Decision). Corephotonics timely appealed that decision,
properly invoking our jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
Besides raising challenges to the merits of the Board’s
decision, Corephotonics presented a challenge under the
Appointments Clause of the Constitution, Art. II, § 2. After
the Supreme Court resolved a similar constitutional chal-
lenge in United States v. Arthrex, Inc., 141 S. Ct. 1970(2021), we remanded this matter, while retaining jurisdic-
tion, to give the Acting Director of the PTO the opportunity
to consider reviewing the Board decision (an opportunity
Corephotonics indicated it wanted). The Acting Director
has now declined to review the Board decision, and Core-
photonics has informed us that it does not challenge the
Acting Director’s denial of review, but seeks only our re-
view of the Board’s decision. We proceed to address Core-
photonics’s challenges to the merits of that decision. We
affirm.
I
A
The ’568 patent describes a camera-lens assembly with
a plurality of lenses (“lens element[s]”) of varying thick-
nesses and refractive power arranged in line along an opti-
cal axis running from an object side (i.e., the side with the
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4 COREPHOTONICS, LTD. v. APPLE INC.
object to be photographed) to an image side (i.e., the side
where the image of the object is formed). ’568 patent, col.
1, lines 49–62. Past the last lens element, on the image
side of the assembly, is an “optional glass window” and an
“image plane” with an “image sensor” for “image for-
mation.” Id., col. 3, lines 37–42.
The ’568 patent purports to improve on previous lens
assemblies by reducing the ratio of the assembly’s TTL to
its EFL. Id., col. 1, lines 33–45. The lens assembly’s TTL
is the distance “on an optical axis between the object-side
surface of the first lens element and the electronic sensor”
where the image captured by the lens is ultimately pro-
jected. Id., col. 2, lines 1–8. The TTL affects the physical
width (thickness) of the camera, while the EFL “deter-
mines how well the camera performs at capturing images
of small or distant objects, as opposed to closer objects.”
J.A. 2246 ¶ 38 (Declaration of Corephotonics expert, Dr.
Duncan Moore). Increasing the EFL allows a lens to mag-
nify and increase the resolution of objects at greater dis-
tances, while simultaneously narrowing the camera lens’s
field of view. J.A. 2246 ¶ 38 (Dr. Moore Declaration). Thus,
reducing the TTL/EFL ratio results in a thin lens with the
capability of capturing far-away objects in great detail. All
five claims in the ’568 patent require that the ratio of TTL
to EFL be smaller than 1. See ’568 patent, col. 8, lines 29–
66.
The ’568 patent also describes the F-number of the lens
assembly, which is the ratio of the focal length of a lens to
its aperture diameter. A smaller F-number means that the
lens is exposed to more light and has a greater illumina-
tion. J.A. 2248 ¶ 40 (Dr. Moore Declaration). All embodi-
ments in the ’568 patent teach an F-number of less than
3.2. ’568 patent, col. 2, lines 8–9.
Finally, the ’568 patent includes tables providing infor-
mation about each embodiment of the lens assembly and
the characteristics of each lens element, including their
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COREPHOTONICS, LTD. v. APPLE INC. 5
radii, thicknesses, and the distances between them along
the optical axis. Id., col. 3, lines 44–48; see also id., col. 5,
line 66, through col. 6, line 4; id., col. 7, lines 23–28. Rele-
vant to this appeal, Table 1 sets forth the thickness of each
lens element in one particular embodiment (Figure 1A) of
the lens assembly, expressing the thickness of lens element
1 as “L11,” with the first “1” referring to the lens element
number and the second “1” referring to the location on the
lens (the center) where the thickness is measured. See id.,col. 4, lines 13–25; see also id., Fig. 1A. The same Figure
1A also shows a distance marked “L1e”—which is the
“width . . . of a flat circumferential edge (or surface) of [the
first] lens element 102.” Id., col. 4, lines 28–29 (emphasis
added). The ratio of L11 to L1e compares the thickness of
the first lens element at its center to the width of its edge;
the parties on appeal refer to this ratio as the center-to-
edge thickness ratio.
The ’568 patent explains that when “TTL/EFL<1.0 and
F#<3.2” there can be a “large ratio” (greater than 4.0) of
L11 to L1e. Id., col. 2, lines 30–33. Such a large L11/L1e
ratio affects “negatively the manufacturability of the lens
and its quality,” the patent observes. Id., col. 2, lines 36–
38. But, the patent continues, “the present inventors have
succeeded in designing the first lens element to have a
L11/L1e ratio smaller than 4, smaller than 3.5, smaller
than 3.2, smaller than 3.1 . . . and even smaller than 3.0,”
resulting in improved manufacturability and quality of the
lens assembly. Id., col. 2, lines 38–45. There are five
claims in the ’568 patent, each of which corresponds to a
different L11/L1e ratio. See id., col. 8, lines 29–66.
Claim 1, the only independent claim in the ’568 patent,
recites:
1. A lens assembly, comprising: a plurality of re-
fractive lens elements arranged along an optical
axis with a first lens element on an object side,
wherein at least one surface of at least one of the
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6 COREPHOTONICS, LTD. v. APPLE INC.
plurality of lens elements is aspheric, wherein the
lens assembly has an effective focal length (EFL),
a total track length (TTL) of 6.5 millimeters or less,
a ratio TTL/EFL of less than 1.0, a F number
smaller than 3.2 and a ratio between a largest op-
tical axis thickness L11 and a circumferential edge
thickness L1e of the first lens element of
L11/L1e<4.
’568 patent, col. 8, lines 29–40. Claims 2–5 depend on claim
1, requiring even smaller values for the L11/L1e ratio—less
than 3.5, 3.2, 3.1, and 3.0, respectively. Id., col. 8, lines 41–
66. Claim 5, which claims a ratio of L11/L1e < 3.0, is the
only dependent claim argued separately on appeal.
B
Apple’s main reference, Ogino, describes several lens
assemblies containing five lens elements for use in a cell
phone. See Ogino, col. 1, line 52, through col. 2, line 18.
Apple relied in particular on Example (Figure) 6 for its ob-
viousness arguments. In Figure 6, the lens elements are
labelled L1 through L5. Id., col. 13, lines 1–16. Figure 6
also includes a cover glass (CG) that “may be disposed be-
tween the fifth lens [element] L5 and the imaging device
100.” Id., col. 5, lines 55–57. Ogino states: “Alternatively,
an effect similar to the optical member CG may be given to
the fifth lens L5 or the like by applying a coating to the fifth
lens L5 or the like without using the optical member CG.
Thereby, it is possible to reduce the number of components,
and to reduce the total length.” Id., col. 5, line 65, through
col. 6, line 2 (emphases added).
Ogino includes a table (Table 11) with values corre-
sponding to the parameters in Example 6 illustrated in Fig-
ure 6. See id., col. 22, lines 11–35. The table includes
numbers for the thicknesses of the lens elements and the
spacing between the components of the assembly. See id.,col. 22, lines 18–34. At the top, Table 11 states: “f = 4.428,
Bf = 1.424, TL = 4.387,” id., col. 22, line 14, where f is “the
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COREPHOTONICS, LTD. v. APPLE INC. 7
focal length . . . of the whole system,” Bf is “the back focal
length,” and TL is “the total lens length,” id., col. 14, lines
48–50. Ogino elaborates: “In addition, the back focal
length Bf indicates an air-converted value, and likewise, in
the total lens length TL, the back focal length portion uses
an air-converted value.” Id., col. 14, lines 50–53. Based on
Ogino’s contemplation of an alternative that does not use a
cover glass, and on Table 11 and Figure 6, Apple argued in
its petition that Ogino teaches an embodiment without a
cover glass where the TTL/EFL ratio is less than 1.0 (a
4.387 focal length is less than a 4.428 total lens length),
meeting the key disputed element of claim 1. J.A. 153–54.
With respect to the claim limitations regarding the cen-
ter-to-edge thickness ratio of the first lens element, Apple
demonstrated in its petition (and in the attached declara-
tion of its expert, Dr. José Sasián) that the L11 value in
Ogino would be 0.557. See J.A. 155–56 (IPR Petition), 583–
84 (Sasián Declaration). It did not contend that Ogino ex-
pressly teaches a value for L1e (which is derived from a
formula that includes L1’s diameter). Rather, Apple relied
on a statement from an optics handbook that it is “‘good
policy’” for the “‘center-to-edge thickness ratio’” (L11/L1e)
to never exceed 3.0. See J.A. 166 (quoting J.A. 1418). Apple
used that statement to argue that the center-to-edge thick-
ness ratio limitations in claims 1–5 would have been obvi-
ous based on Ogino alone. See J.A. 166, 169–72.
Apple also argued that claims 1–5 would have been ob-
vious based on a combination of Ogino and Beich. See J.A.
172–97. Beich discusses the “process of creating state-of-
the-art polymer optics” and reviews the tradeoffs “between
design tolerances, production volumes, and mold cavita-
tion.” J.A. 1329. Beich states that optical assemblies with
“thicker parts take longer to mold than thinner parts” and
that “extremely thick centers and thin edges are very chal-
lenging to mold.” J.A. 1334. To address issues of “cost and
manufacturability,” Beich provides a variety of “rules of
thumb” set forth in a table. See J.A. 1334. Those rules of
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8 COREPHOTONICS, LTD. v. APPLE INC.
thumb, Beich explains, “interact with one another” and a
“change in one area will impact another.” J.A. 1335. In a
table setting forth its rules of thumb, Beich teaches a “cen-
ter thickness to edge thickness ratio” of <3:1. J.A. 1334.
Relying on Beich, Apple argued in its petition that a rele-
vant artisan would have been motivated by the advantages
of cost and manufacturability to apply Beich’s teachings to
Ogino, such that L11/L1e would be less than 3.0. J.A. 173–
77; see also J.A. 602–03 ¶ 56 (Sasián Declaration).
Corephotonics disputed that Ogino’s Figure 6 and Ta-
ble 11 teach an embodiment where the assembly’s TTL is
less than its EFL. See J.A. 2197–2215. Corephotonics also
disputed that a relevant artisan would have been moti-
vated to apply the Beich rule of thumb regarding the cen-
ter-to-edge thickness ratio of <3:1 to Ogino’s first lens
element in Figure 6, asserting that the remaining lens ele-
ments in Ogino (L2–L5) violate Beich’s other rules of
thumb. J.A. 2221–27. In particular, Beich suggests that
the diameter-to-center thickness ratio be less than 4:1, and
lens elements L2–L5 in Ogino Figure 6 do not have such a
ratio. J.A. 2225–26. On those grounds, Corephotonics ar-
gued that Apple had not shown that a relevant artisan
would have been motivated to select Beich’s center-to-edge
thickness rule and apply it to L1. J.A. 2226–27.
C
In its final written decision, the Board agreed with Ap-
ple on the two issues presented for review by Corephotonics
in this court. The Board found that Ogino teaches a TTL
less than EFL as required by claim 1 of the ’568 patent.
Board Decision, 2020 WL 1696140, at *10–12. In a finding
not disputed in this court, the Board also found that it
would have been obvious to modify Ogino to meet the cen-
ter-to-edge thickness limitations of claims 1–4, citing the
optics textbook. Id. at *15–17. Based on those findings,
the Board concluded that the subject matter of claims 1–4
would have been obvious over Ogino alone. Id. at *16–17.
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COREPHOTONICS, LTD. v. APPLE INC. 9
For claim 5, with its requirement that L11/L1e be less
than 3.0, the Board found that a relevant artisan would
have been motivated to implement the center-to-edge
thickness ratio rule of thumb (<3:1) from Beich into the
Figure 6 Ogino assembly. See id. at *18–20. The Board
disagreed with Corephotonics that a relevant artisan
would not look to Beich when modifying Ogino because the
artisan could not in practice “implement[] each and every
one of Beich’s set of rules of thumb” into the Ogino assem-
bly. Id. at *19. “The reason the ordinarily skilled artisan
would look to Beich,” the Board found, “is to obtain a value
not specified by Ogino—the diameter of the first lens ele-
ment L1,” whereas the remaining “rules of thumb” re-
quired changing values that were explicitly defined by
Ogino. Id. The Board further found that a relevant artisan
would have been motivated to use Beich to supply the miss-
ing diameter of L1 “because the ratio disclosed in Beich’s
Table 2 constitutes the limits of fabrication in an ideal lens
system.” Id. Based on those findings, the Board concluded,
the lens assembly of claim 5 would have been obvious to a
relevant artisan in light of Beich and Ogino. Id. at *19–20.
III
We review the Board’s legal conclusions de novo and its
factual findings for substantial-evidence support. Arendi
S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1360 (Fed. Cir. 2016).
The ruling on obviousness is a legal conclusion, based on
underlying determinations of fact. PersonalWeb Techs.,
LLC v. Apple, Inc., 917 F.3d 1376, 1381 (Fed. Cir. 2019).
Such factual determinations include whether a prior-art
reference teaches away and whether a relevant artisan
would have been motivated to make a combination of prior-
art references. Gen. Elec. Co. v. Raytheon Techs. Corp., 983
F.3d 1334, 1345 (Fed. Cir. 2020).
A
With respect to claims 1–4, Corephotonics’s sole con-
tention in this court is that Ogino does not teach an
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10 COREPHOTONICS, LTD. v. APPLE INC.
embodiment with a TTL less than EFL. Corephotonics
Opening Br. at 18–29. Corephotonics’s arguments and the
Board’s analysis are materially the same as those in the
20-1424 Decision, where we upheld the Board’s determina-
tion that Ogino expressly teaches an embodiment of Figure
6 in which TTL is less than EFL. Although that decision
was in the context of an anticipation challenge (rather than
obviousness), Corephotonics has made no argument here
that the distinction is relevant or that it warrants separate
discussion. We rely on our discussion in the 20-1424 Deci-
sion to affirm the Board’s ruling that Ogino teaches a TTL
less than EFL. That conclusion requires affirmance of the
obviousness conclusion as to claims 1–4 here.
B
We also affirm the Board’s conclusion of obviousness of
claim 5 based on the determination, which is supported by
substantial evidence, that a relevant artisan would have
been motivated to make the combination of Ogino and
Beich that meets the limitations of the claim.
Corephotonics contends that because four out of five
lens elements in Ogino Figure 6 violate a different Beich
rule of thumb (the rule suggesting a diameter-to-center
thickness ratio of less than 4:1), the Board’s focus on apply-
ing the center-to-edge thickness ratio rule of thumb (a
L11/L1e ratio of less than 3:1) was error. Corephotonics
Opening Br. at 29–34. Corephotonics argues that modify-
ing Figure 6 to satisfy both the diameter-to-center and cen-
ter-to-edge ratios would “dramatically reduce the
performance of the lens and defeat the stated goals of
Ogino’s invention” by increasing the diameter of L5. Id. at
32 (citing J.A. 2290–93 ¶¶ 125–26). And, Corephotonics
adds, the Board did not explain why a relevant artisan
would have applied only the center-to-edge thickness ratio
rule from Beich (to reduce costs and improve manufactur-
ability), ignoring Beich’s diameter-to-thickness ratio rule.
Id. at 32–34.
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COREPHOTONICS, LTD. v. APPLE INC. 11
The Board rejected this contention and had substantial
evidence to support the rejection. See Board Decision, 2020
WL 1696140, at *19. The L11/L1e ratio that is at issue is
solely about the first lens element (L1), not the fifth lens
element (L5). The Board had before it substantial evidence
that manufacturing considerations would have motivated
a relevant artisan to use Beich’s express rule of thumb as
to the center-to-edge thickness ratio to fill in a missing
piece of information about L1 in Ogino. Id. Corephotonics
does not contend that doing so would violate Beich’s diam-
eter-to-center thickness ratio for L1, but focuses only on
what would happen if an artisan modified other lens ele-
ments, specifically L5. But the Board reasonably found
that not all rules of thumb had to be applied to all lenses in
an assembly in order for some to be applied to some lenses.
Id. Beich recognizes that rules of thumb are just that—
they are “useful for initial discussions,” but “can quickly
break down.” J.A. 1335.
Nothing in Ogino or Beich “‘criticize[s], discredit[s], or
otherwise discourage[s]’ investigation into,” so as to teach
away from, selecting the center-to-edge thickness ratio rule
of thumb for L1 without modifying other lens elements. Po-
laris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069
(Fed. Cir. 2018) (quoting In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004)). Nor does the optics handbook do so when
it says that lens designers should “oversize optical ele-
ments, if possible, to a dimension considerably beyond the
clear apertures.” J.A. 1419.
Corephotonics points to what it says is unrebutted tes-
timony from its expert, Dr. Moore, that a relevant artisan
would not have combined Ogino and Beich. In his declara-
tion, Dr. Moore stated:
According to Beich, the “rules of thumb” are in-
tended to reduce cost and improve manufacturabil-
ity. Ex. 1020 at 7. But removing the cover glass
from the image sensor indisputably increases costs
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12 COREPHOTONICS, LTD. v. APPLE INC.
and reduces manufacturability . . . . If cost and
manufacturability are requirements motivating
use of the Beich rules of thumb, then that [relevant
artisan] would not be motivated to remove the
cover glass [to comply with the TTL/EFL limita-
tions]. Conversely, if the designer is willing to in-
cur the costs and difficulties of using sensors
without cover glass, then they are unlikely to be
motivated to follow the Beich “rules of thumb.”
J.A. 2294 ¶ 128. But it is a commonplace fact that design
decisions entail making tradeoffs among multiple objec-
tives. Allied Erecting and Dismantling Co. v. Genesis At-
tachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (“A
given course of action often has simultaneous advantages
and disadvantages, and this does not necessarily obviate
motivation to combine.”). Beich itself recognizes the need
for “tremendous flexibility” for lens designers in creating
optical assemblies. J.A. 1329. The Board properly rejected
Corephotonics’s blanket assertion that any willingness to
incur higher costs or reduced manufacturability to choose
the coverless Ogino option (a premise for which Dr. Moore
did not offer concrete support) would have undermined (ra-
ther than enhanced) the motivation to save costs or im-
prove manufacturability in other ways, such as by
following Beich’s rule of thumb for the center-to-edge thick-
ness ratio.
Thus, substantial evidence supports the Board’s deter-
mination that claim 5 would have been obvious based on
Beich and Ogino.
III
For the foregoing reasons, the decision of the Board is
affirmed.
AFFIRMED