Corephotonics, Ltd. v. Apple Inc.

Case: 20-1424    Document: 72    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        NOTE: This disposition is nonprecedential.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
             ______________________

                       2020-1424
                 ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. IPR2018-
 01140.
                  ______________________

                Decided: October 25, 2021
                 ______________________

     MARC AARON FENSTER, Russ August & Kabat, Los An-
 geles, CA, argued for appellant. Also represented by NEIL
Case: 20-1424    Document: 72     Page: 2    Filed: 10/25/2021




 2                         COREPHOTONICS, LTD.   v. APPLE INC.



 RUBIN.

    ANGELA OLIVER, Haynes & Boone, LLP, Washington,
 DC, argued for appellee. Also represented by ANDREW S.
 EHMKE, DEBRA JANECE MCCOMAS, Dallas, TX; MICHAEL
 SCOTT PARSONS, Plano, TX.

    FARHEENA YASMEEN RASHEED, Office of the Solicitor,
 United States Patent and Trademark Office, Alexandria,
 VA, argued for intervenor. Also represented by MICHAEL
 S. FORMAN, THOMAS W. KRAUSE, MAUREEN DONOVAN
 QUELER.
                  ______________________

     Before TARANTO, HUGHES, and STOLL, Circuit Judges.
 TARANTO, Circuit Judge.
      Corephotonics, Ltd. owns U.S. Patent No. 9,402,032,
 which describes and claims optical lens assemblies. In May
 2018, Apple Inc. successfully petitioned the Patent and
 Trademark Office (PTO) for an inter partes review of four
 claims of the ’032 patent under 35 U.S.C. §§ 311–319. Ap-
 ple argued (1) that U.S. Patent No. 9,128,267 (Ogino) an-
 ticipated claims 1 and 13 of the ’032 patent and (2) that
 claims 14 and 15 of the ’032 patent would have been obvi-
 ous to a relevant artisan based on a combination of Ogino
 and U.S. Patent No. 8,233,224 (Chen). The PTO’s Patent
 Trial and Appeal Board agreed. For claims 1 and 13, it
 found that Ogino teaches an embodiment that meets all the
 claim requirements, including the requirement of a lens as-
 sembly with an effective focal length (EFL) that exceeds its
 total track length (TTL). Apple Inc. v. Corephotonics, Ltd.,
 IPR2018-01140, 2019 Pat. App. LEXIS 13253, at *20–31
 (P.T.A.B. Dec. 3, 2019) (Board Decision). For claims 14 and
 15, the Board found that a relevant artisan would have
 been motivated to use a meniscus lens, as taught by Chen,
 as the second lens element in the assembly, replacing
Case: 20-1424     Document: 72         Page: 3   Filed: 10/25/2021




 COREPHOTONICS, LTD.   v. APPLE INC.                           3



 Ogino’s biconcave second lens, and that doing so would
 have been obvious. Id. at *31–45.
     Corephotonics timely appealed, and we have jurisdic-
 tion under 28 U.S.C. § 1295(a)(4). Besides raising chal-
 lenges 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 re-
 solved a similar constitutional challenge in United States
 v. Arthrex, Inc., 141 S. Ct. 1970 (2021), we remanded this
 matter, while retaining jurisdiction, to give the Acting Di-
 rector 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 Corephotonics has informed us
 that it does not challenge the Acting Director’s denial of
 review, but seeks only our review of the Board’s decision.
 We proceed to address Corephotonics’s challenges to the
 merits of that decision. We affirm.
                                I
                                A
      The ’032 patent describes a lens assembly intended for
 use as a telephoto lens (a high-resolution lens) in “a porta-
 ble electronic product such as a cellphone.” ’032 patent, col.
 1, lines 16–19. The assembly includes a plurality of lenses
 (“lens element[s]”) of varying thicknesses and refractive
 power arranged in line along an optical axis running from
 an object side (i.e., the side with the object to be photo-
 graphed) to an image side (i.e., the side where the image of
 the object is formed). See id., col. 2, line 61, through col. 3,
 line 9. Past the last lens element, on the image side of the
 assembly, is an “image sensor” and “image plane” for cap-
 turing the image. Id., col. 3, lines 13–15. Some embodi-
 ments include a cover glass element between the last lens
 element and the image sensor. Id., col. 3, lines 11–13. All
 embodiments of the lens assembly described in the ’032 pa-
 tent include a “second plastic lens element” (starting from
Case: 20-1424      Document: 72      Page: 4     Filed: 10/25/2021




 4                           COREPHOTONICS, LTD.    v. APPLE INC.



 the object side) “having a meniscus convex object-side sur-
 face.” Id., col. 2, lines 65–67. A meniscus lens is a lens with
 one convex side and one concave side. J.A. 487.
      The ’032 patent purports to improve on previous lens
 assemblies by reducing the ratio of the assembly’s TTL to
 its EFL. ’032 patent, col. 1, lines 30–38. The TTL of a min-
 iature lens assembly measures distance along the assem-
 bly’s optical axis and “determines how long or thick a
 camera will be,” while the EFL “determines how well the
 camera performs at capturing images of small or distant
 objects, as opposed to closer objects.” J.A. 1668 ¶ 34 (Dec-
 laration of Corephotonics expert, Dr. Duncan Moore). A
 greater EFL gives the camera a narrower “field of view,”
 which yields an image that “can resolve precise features
 like . . . tree branches” for “objects at greater distances.”
 J.A. 1668 ¶ 34. Reducing the TTL/EFL ratio results in a
 thin lens with the capability of capturing far-away objects
 in great detail. J.A. 1668–69 ¶¶ 34–35. “In all embodi-
 ments [described in the ’032 patent], TTL is smaller than
 the EFL, i.e., the TTL/EFL ratio is smaller than 1.0.” ’032
 patent, col. 1., lines 63–65.
     Table 1 of the ’032 patent provides details about the
 lens elements in one particular embodiment of the assem-
 bly, including the elements’ radii of curvature, their diam-
 eters, their thicknesses, and the space between them along
 the optical axis. Id., col. 3, lines 17–37; see also id., col. 4,
 lines 2–17 (Table 1). The embodiment described in Table 1
 has an EFL of 6.90 mm and a TTL of 5.904 mm, resulting
 in a TTL/EFL ratio of 0.855. Id., col. 4, lines 35–37.
     Claim 1, the only independent claim at issue, recites:
     1. A lens assembly, comprising: a plurality of re-
     fractive lens elements arranged along an optical
     axis, wherein at least one surface of at least one of
     the plurality of lens elements is aspheric, wherein
     the lens assembly has an effective focal length
     (EFL), and wherein the lens assembly has a total
Case: 20-1424     Document: 72         Page: 5   Filed: 10/25/2021




 COREPHOTONICS, LTD.   v. APPLE INC.                           5



     track length (TTL) of 6.5 millimeters or less and a
     ratio TTL/EFL of less than 1.0, wherein the plu-
     rality of lens elements comprises, in order from an
     object side to an image side, a first lens element
     with positive refractive power and a second lens el-
     ement with negative refractive power, wherein a
     focal length fl of the first lens element is smaller
     than TTL/2.
 Id., col. 7, lines 43–53 (emphasis added). Claim 13 depends
 on claim 1; on appeal, Corephotonics does not challenge the
 Board’s finding that Ogino teaches claim 13’s additional
 limitation. Claims 14 and 15 add limitations, only one of
 which is at issue on appeal: “wherein the first lens element
 has a convex object-side surface and a convex or concave
 image-side surface and wherein the second lens element is
 a meniscus lens having a convex object-side surface.” Id.,
 col. 8, lines 46–49; id., col. 8, lines 50–51.
                                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 an-
 ticipation argument. In Figure 6, the lens elements are la-
 belled L1 through L5, and the second lens element (L2)
 “has a biconcave shape.” 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
Case: 20-1424     Document: 72      Page: 6    Filed: 10/25/2021




 6                          COREPHOTONICS, LTD.    v. APPLE INC.



 Figure 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
 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 47–53. Corepho-
 tonics’s expert, Dr. Moore, explained: “the TL replaces the
 physical thickness of the optical member [cover glass] with
 a value equal to its thickness divided by the ratio of the
 [cover glass’s] index of refraction to that of air.” J.A. 1684
 ¶ 66. 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 em-
 bodiment without a cover glass where the TTL/EFL ratio
 is less than 1 (a 4.387 focal length is less than a 4.428 total
 lens length), meeting the key disputed element of claim 1
 for purposes of anticipation. J.A. 129.
      Apple also argued that claims 14 and 15 of the ’032 pa-
 tent would have been obvious to a relevant artisan in view
 of Ogino and Chen. Chen relates to a lens assembly, like
 Ogino. But unlike Ogino, whose second lens is biconcave,
 Chen teaches a second lens element “having a convex ob-
 ject-side surface 111 and a concave image-side surface
 112”—i.e., a meniscus lens. Chen, col. 6, line 51, through
 col. 7, line 4; see also J.A. 478 ¶ 56 (Declaration of Apple
 expert, Dr. José Sasián). Apple argued that a relevant ar-
 tisan would be motivated to substitute Chen’s second lens
 for Ogino’s, relying on testimony of its expert, Dr. Sasián.
     According to Dr. Sasián, an advantage of a meniscus
 lens is that it reduces “vignetting,” J.A. 482 ¶ 61, which “is
 the blocking of rays on or near the outer edges of a lens
 system,” J.A. 475 ¶ 51, and is undesirable for “lens systems
Case: 20-1424    Document: 72          Page: 7   Filed: 10/25/2021




 COREPHOTONICS, LTD.   v. APPLE INC.                           7



 designed for cellular telephones,” for which “relative illu-
 mination . . . greater than 50%” is sought, J.A. 479–80 ¶ 58;
 see also J.A. 1060 (identifying desirable specifications for
 cellphone lenses). Dr. Sasián explained that a relevant ar-
 tisan, using common design software (e.g., Zemax), would
 have understood that the biconcave shape of the second
 lens element in Ogino’s Figure 6 produced a relative illu-
 mination under 50%, J.A. 479–81 ¶¶ 58–60, and that use
 of a meniscus lens would raise that figure by reducing vi-
 gnetting, J.A. 483 ¶ 62. Dr. Sasián also stated that a rele-
 vant artisan would be motivated to use a meniscus lens to
 reduce both “ray aberration,” J.A. 482–85 ¶¶ 60–64, and
 the “chief ray angle (CRA)” to levels desired for mobile
 phone lenses, J.A. 476–77 ¶ 53. Dr. Sasián concluded that
 substituting Chen’s meniscus lens into Figure 6 was “a rou-
 tine lens adjustment” that a relevant artisan would have
 been motivated to make. J.A. 479–81 ¶¶ 58–60.
     Corephotonics disputed Apple’s contentions. With re-
 spect to the anticipation argument based on the “TL” num-
 ber in Ogino’s Table 11, Corephotonics responded that the
 Table 11 “TL” number was based on a “theoretical” air-con-
 verted value, not an actual total track length of an embod-
 iment that omitted the cover glass—which would require
 information not in Ogino about where the coverless sensor
 would be located. J.A. 1140–42. With respect to Apple’s
 obviousness argument, Corephotonics responded that
 Ogino encourages the use of a biconcave lens to reduce im-
 age aberrations and that a relevant artisan would not have
 been motivated to replace the second lens element with a
 meniscus lens out of the “‘near-infinite’” possibilities for
 modification. Board Decision, 2019 Pat. App. LEXIS
 13253, at *38 (quoting Patent Owner Response).
                               C
     The Board ruled for Apple. In agreeing that Ogino
 teaches a lens assembly that anticipates claims 1 and 13,
 the Board found that the “TL” value listed in Table 11 does
Case: 20-1424    Document: 72      Page: 8    Filed: 10/25/2021




 8                          COREPHOTONICS, LTD.   v. APPLE INC.



 teach an actual total track length in an embodiment with-
 out the cover glass, calculated by adding (a) the widths of
 the five lenses and the spacing between them as listed in
 the table and (b) “the back focal length Bf given in Table 11
 as 1.424 mm,” a value that represented the distance be-
 tween the final lens and the image plane. Id. at *26. The
 Board noted that “Ogino explicitly discloses that the cover
 glass CG can be removed,” id., and cited the recognition by
 Corephotonics’s expert, Dr. Moore, that “cover glass is op-
 tional” and “if it is not present, it need not be counted in
 the TTL measurement,” id. at *27 (citing J.A. 1916 (Tr. at
 70:2–22) (Dr. Moore Deposition)). The Board found that
 the air-converted value indicates the distance at which the
 image sensor must be placed from the final lens when the
 cover glass is omitted. Id. at *28–29. On this basis, the
 Board found that Ogino teaches a TTL/EFL of less than 1,
 resolving the key issue for anticipation. Id.
     As to obviousness, the issue for claims 14 and 15 of the
 ’032 patent, the Board agreed with Apple that a relevant
 artisan would have been motivated and found it obvious to
 replace the biconcave second lens element in Ogino with
 the corresponding meniscus lens in Chen. Id. at *31–45.
 The Board credited Dr. Sasián’s opinion that vignetting
 would be undesirable in a telephoto lens and that replacing
 Ogino’s second lens with Chen’s second lens would reduce
 vignetting, mitigate ray aberration, reduce the chief ray
 angle, and increase “relative illumination” to over 50%, mo-
 tivating a relevant artisan to make the replacement for a
 cellphone lens system. Id. at *36–38. The Board rejected
 Corephotonics’s argument that the proposed substitution
 would require selecting such a change out of a “near infi-
 nite” number of possible modifications, pointing out that
 both experts agreed that relevant artisans in this field of-
 ten begin with a lens assembly of “suitable design” and
 then use software to “modify it based on teachings of other
 systems or existing knowledge.” Id. at *40–43. Therefore,
 a relevant artisan would have found it “routine” to change
Case: 20-1424    Document: 72          Page: 9   Filed: 10/25/2021




 COREPHOTONICS, LTD.   v. APPLE INC.                           9



 one element of a lens system to improve a desired element
 (with the software doing the rest of the work) and would
 have been motivated to make the change to a meniscus lens
 in order to reduce vignetting and reduce ray aberration. Id.
 at *41–42.
                               II
     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 anticipation is a factual determination. Wa-
 sica Finance GmbH v. Continental Automotive Sys., Inc.,
 853 F.3d 1272, 1278 (Fed. Cir. 2017). The ruling on obvi-
 ousness is a legal conclusion, based on underlying determi-
 nations of fact. PersonalWeb Techs., LLC v. Apple, Inc., 917
 F.3d 1376, 1381 (Fed. Cir. 2019). Such factual determina-
 tions 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
     For a reference to anticipate a claim under 35 U.S.C.
 § 102, “each claim element must be disclosed, either ex-
 pressly or inherently, in a single prior art reference, and
 the claimed arrangement or combination of those elements
 must also be disclosed, either expressly or inherently, in
 that same prior art reference.” Therasense, Inc. v. Becton,
 Dickinson & Co., 593 F.3d 1325, 1332–33 (Fed. Cir. 2010).
 Here, the anticipation issue comes down to whether Ogino
 teaches a lens assembly in which the cover glass is omitted
 and the resulting total track length is 4.387 mm (the TL
 number in Table 11). If it does, that number is undisput-
 edly less than the effective focal length (4.428 mm), satis-
 fying the claim 1 requirement of TTL/EFL < 1.0—the only
 contested issue now regarding anticipation of claims 1 and
 13.
Case: 20-1424     Document: 72      Page: 10    Filed: 10/25/2021




 10                          COREPHOTONICS, LTD.   v. APPLE INC.



     The Board found that Ogino teaches an embodiment of
 Figure 6 that does not include a cover glass and for which
 the 4.387 TL value in Table 11 represents a physical length
 expressing the total track length of that embodiment.
 Board Decision, 2019 Pat. App. LEXIS 13253, at *25–29.
 Ogino supports the finding. After describing its assembly
 and the inclusion of a cover glass element, Ogino states:
      Alternatively, an effect similar to the optical mem-
      ber 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.
 Ogino, col. 5, line 65, through col. 6, line 2 (emphases
 added). That language contemplates an embodiment of
 Ogino’s lens assembly without a cover glass element and
 further recognizes that removing that element will reduce
 the assembly’s total length, i.e., the “total lens length,” id.,
 col. 14, line 50. The Board could have reasonably found
 that the reduction is a reduction to the TL value in Table
 11, in what the ’032 patent calls the total track length. As
 Dr. Sasián explained, summing the values in Table 11
 where the cover glass is included (D2–D13) results in a
 track length of 4.489 mm; and when Figure 6 is considered
 without the cover glass, the total track length is obtained
 by summing the thicknesses of the lens elements and their
 distances from one another (values D2–D10), while exclud-
 ing the thickness of and space in front of the cover glass
 (values D11–13), but adding in a back-focal-length value to
 represent the spacing in front of the coverless sensor. See
 J.A. 502; 1441–42 (Tr. 103:18–104:1), 2071 (Tr. 67:11–18);
 Ogino, Table 11; see also Board Decision, 2019 Pat. App.
 LEXIS 13253, at *25–26. This calculation adds 2.963 mm
 (for D2–D10) to 1.424 mm (the back focal length, Bf) to re-
 sult in a track length of 4.387 mm—which is the TL value
 stated in Table 11. Ogino, Table 11. This evidence permit-
 ted the Board to find that the 4.387 mm value represents a
Case: 20-1424   Document: 72       Page: 11   Filed: 10/25/2021




 COREPHOTONICS, LTD.   v. APPLE INC.                      11



 total track length of a coverless embodiment, supporting
 the anticipation finding for claims 1 and 13.
                               B
     With respect to claims 14 and 15 of the ’032 patent,
 Corephotonics contends that the Board erred by determin-
 ing that a relevant artisan would have been motivated to
 replace the biconcave lens from Ogino—which it describes
 as an “essential feature” of the second lens element—with
 the meniscus lens from Chen. Corephotonics Opening Br.
 at 42–43. Corephotonics focuses on the statement in Ogino
 that the second lens must be biconcave to reduce the as-
 sembly’s track length, see Ogino, col. 7, lines 39–42, and
 contends that a relevant artisan who would be motivated
 to remove the cover glass in Figure 6 to reduce the total
 track length would not counteract that decision by select-
 ing a meniscus lens that would not similarly reduce the
 track length, see Corephotonics Opening Br. at 42–43.
 Corephotonics also argues that the Board erred by accept-
 ing the motivation that Apple has offered for the combina-
 tion of Chen and Ogino—specifically, that a relevant
 artisan would have sought to reduce vignetting by imple-
 menting a meniscus lens—because vignetting is not inher-
 ently undesirable and because nothing in Chen discusses
 the use of a meniscus lens as the cause of reduced vignet-
 ting. Id. at 44–45.
      Corephotonics does not address the Board’s finding
 that a relevant artisan “would have been further motivated
 to modify Ogino in view of [Chen]’s teachings concerning
 its second lens element, in order to reduce aberration and
 reduce the [chief ray angle].” Board Decision, 2019 Pat.
 App. LEXIS 13253, at *37–38 (citing J.A. 476 ¶ 53 (Dr. Sas-
 ián Declaration)). Those further motivations appear to be
 independent bases for the Board’s finding of a motivation
 to combine Ogino and Chen, sufficing by themselves to af-
 firm the Board’s motivation-to-combine analysis (the only
 meaningfully contested aspect of the obviousness
Case: 20-1424    Document: 72     Page: 12    Filed: 10/25/2021




 12                         COREPHOTONICS, LTD.   v. APPLE INC.



 conclusion). See Impax Labs. Inc. v. Lannett Holdings Inc.,
 893 F.3d 1372, 1377–78 (Fed. Cir. 2018); SmithKline Bee-
 cham Corp. v. Apotex Corp., 439 F.3d 1312, 1319 (Fed. Cir.
 2006). But even as to what Corephotonics does challenge
 in this court, the Board had before it substantial evidence
 to support its finding.
     The Board found, based on evidence that Apple pre-
 sented from an optics textbook, see J.A. 761, that vignetting
 is a well-known “issue” and that a relevant artisan would
 have been motivated to correct Ogino by using a meniscus
 lens because the artisan would have understood that such
 a lens would not only reduce vignetting but would also “re-
 sult in relative illumination over 50%, which is known to
 be desirable,” Board Decision, 2019 Patent App. LEXIS
 13253, at *36–37 (citing J.A. 475–79 ¶¶ 51, 57). The evi-
 dence supports that finding. J.A. 475–79 ¶¶ 51–58; see also
 J.A. 1060 (article suggesting relative illumination of more
 than 50%). Indeed, Ogino itself states that it is “advanta-
 geous to reduce ‘deterioration in the light receiving effi-
 ciency and occurrence of color mixture due to increase of
 incident angle’ [i]n order ‘to achieve optimum optical per-
 formance.’” Board Decision, 2019 Patent App. LEXIS
 13253, at *37–38 (quoting Ogino, col. 7, lines 21–25).
     Further, despite language in Ogino explaining that the
 rationale for using a biconcave second lens element is to
 reduce track length, Ogino, col. 7, lines 39–42, nothing in
 Ogino “would have the effect of discrediting or discouraging
 the use of a meniscus shaped lens.” Board Decision, 2019
 Patent App. LEXIS 13253, at *38–40; see also In re Fulton,
 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere
 disclosure of more than one alternative does not constitute
 a teaching away from any of these alternatives because
 such disclosure does not criticize, discredit, or otherwise
 discourage the solution claimed . . . .”). Ogino states that
 “the present invention is not limited to the above-men-
 tioned embodiments” and that the lens elements’ “values of
 the radius of curvature” and “aspheric surface
Case: 20-1424    Document: 72        Page: 13   Filed: 10/25/2021




 COREPHOTONICS, LTD.   v. APPLE INC.                        13



 coefficient[s]” may be modified. Ogino, col. 16, lines 11–19.
 Substituting a biconcave lens element for a meniscus one
 would be one way to make such modifications. See J.A.
 481–82 (Dr. Sasián Declaration); J.A. 605, 613–17 (optics
 textbook).
      Nor is the modification to Ogino based on Chen a result
 of “impermissible hindsight” as Corephotonics suggests.
 Corephotonics Opening Br. at 46–48. The Board found that
 both experts agreed that when seeking to improve a lens
 assembly, a relevant artisan “would have . . . start[ed] with
 a suitable design and then look[ed] to modify it based on
 teachings of other systems or existing knowledge.” Board
 Decision, 2019 Pat. App. LEXIS 13253, at *41–42; see also
 J.A. 476 ¶ 53, 481–82 ¶ 60 (Dr. Sasián Declaration), 1905
 (Tr. 27:19–29:3) (Dr. Moore Deposition). The Board cred-
 ited Dr. Sasián’s testimony that switching a biconcave lens
 for a meniscus lens “‘would be a routine lens adjustment’”
 for a relevant artisan, and that such an artisan “would
 have understood that the undesirable vignetting of Ogino
 would be mitigated by modifying the shape of the second
 lens.” Board Decision, 2019 Pat. App. LEXIS 13253, at
 *41–42 (quoting J.A. 147); see also J.A. 481–82 ¶ 60. There
 is thus substantial evidence supporting the Board’s finding
 that a relevant artisan would have been motivated to com-
 bine Ogino’s Figure 6 with Chen’s second lens to arrive at
 the challenged claims.
                               III
     For the foregoing reasons, the judgment of the Patent
 Trial and Appeal Board is affirmed.
                         AFFIRMED