Federal Circuit Affirms PTAB Decision in Motorola Mobility LLC v. Largan Precision Co. Ltd.

Federal Circuit Affirms PTAB Decision in Motorola Mobility LLC v. Largan Precision Co. Ltd.

“Motorola Mobility's challenge to Largan Precision's patent rejected by PTAB”

In a significant ruling on Monday, the U.S. Court of Appeals for the Federal Circuit affirmed a decision made by the Patent Trial and Appeal Board, upholding claims 1-27 of Largan Precision Co., Ltd.'s U.S. Patent No. 9,696,519. This ruling came in the context of an inter partes review filed by Motorola Mobility LLC, which had challenged the patent in question. The Federal Circuit’s decision sheds light on key aspects of patentability, particularly regarding the motivations behind combining prior art references.

Background of the Case

The case centres around Largan’s U.S. Patent No. 9,696,519, which pertains to an imaging optical lens assembly, specifically used in camera modules for mobile devices. The patent involves a lens arrangement that consists of five distinct lens elements. These elements are arranged in a specific order from the object side to the image side, each having defined refractive powers, and the claims include complex mathematical relationships among the elements.

Motorola, through its IPR petition, sought to invalidate the patent by arguing that claims 1-27 were unpatentable under 35 U.S.C. § 103 due to obviousness. To support this, Motorola referenced two prior art documents: Chung (U.S. Patent Application Publication No. 2015/0098137) and Sekine (U.S. Patent Application Publication No. 2013/0182339). Motorola argued that a person of ordinary skill in the art would have been motivated to combine the teachings of Chung and Sekine, which would have led to the patented lens assembly configuration.

Details of the Patent at Issue

The '519 patent’s representative claim outlines specific requirements for the five-lens optical assembly, which includes:

• A first lens element with negative refractive power and a concave object-side surface.
• A second lens element with positive refractive power.
• A third lens element with negative refractive power.
• A fourth lens element with positive refractive power.
• A fifth lens element, which also has negative refractive power and an image-side surface that is concave in the paraxial region.

Additionally, the claims set forth specific mathematical relationships, such as:

• |R4/R3| < 1.0
• f5/f3 < 1.0
• -10.0 < R1/f < 0

These details were crucial in determining whether Motorola’s challenge could invalidate the patent, especially since a combination of prior art references was central to the argument of obviousness.

Motorola's Argument and ZEMAX Evidence

Motorola’s position was that Chung’s embodiments, specifically Embodiments 11 and 12, met all of the claim limitations of the '519 patent, except for the final R1/f limitation. According to Motorola, this final limitation was disclosed in Sekine’s prior art. Motorola’s expert introduced ZEMAX modelling evidence, a software tool used to simulate optical systems, to demonstrate that a skilled artisan would have been able to combine the teachings of Chung and Sekine without undue experimentation. In particular, Motorola argued that this combination would lead to the improvement of image quality while increasing the field of view, which was an objective in the relevant technical field.

PTAB’s Findings

The PTAB, in its decision, rejected Motorola’s challenge. While acknowledging that Motorola’s expert had provided evidence supporting a reasonable expectation of success in combining the references, the Board found that Motorola had failed to prove that there was a sufficient motivation to combine the teachings of Chung and Sekine.

The Board identified “significant differences” between the two prior art systems. Specifically, Chung’s embodiments featured a negative first lens and a positive second lens, whereas Sekine disclosed a system with an opposite configuration—positive first lens and negative second lens. Additionally, the PTAB found that Sekine’s lens system was of inferior quality in terms of image resolution and field of view, undermining Motorola’s argument that applying Sekine’s teachings to Chung would have led to an improvement.

As a result, the PTAB concluded that Motorola’s ZEMAX evidence was not sufficient to prove that a skilled artisan would have been motivated to combine the references in the manner suggested. The Board did not address the question of whether such a combination would have led to a reasonable expectation of success, since it determined that there was no motivation to combine in the first place.

Federal Circuit’s Ruling

The Federal Circuit upheld the PTAB’s decision, finding no reversible error in the Board’s reasoning. The court emphasized that while Motorola’s ZEMAX evidence showed that a skilled artisan could combine the references in question, it did not establish that the artisan would have been motivated to do so. This distinction is crucial in the obviousness analysis. The CAFC cited the precedent set by Adidas AG v. Nike, Inc., where it was clarified that the inquiry into obviousness does not focus merely on whether an artisan could combine references, but rather whether they would have had the motivation to do so. The court pointed out that Motorola’s ZEMAX evidence primarily demonstrated feasibility—that the combination was technically possible—not motivation. Therefore, it affirmed the PTAB's decision without finding any reversible error.

Implications

The ruling in Motorola Mobility LLC v. Largan Precision Co., Ltd. underscores the importance of motivation in the obviousness analysis. While technical feasibility—such as the use of modelling tools like ZEMAX—can demonstrate that a skilled artisan could combine two references, it is the motivation to combine those references that plays a decisive role in determining whether the combination would have been obvious. In this case, the Federal Circuit reinforced the principle that obviousness is not determined merely by the possibility of combining prior art, but by whether such a combination would have been obvious to someone skilled in the field at the time.

This decision may have far-reaching implications for future patent challenges, particularly those involving complex technologies where feasibility and motivation are often central points of contention. The case highlights the importance of substantiating not just the technical possibility of a combination, but also the logical and factual reasons why such a combination would have been pursued by a skilled artisan in the first place.