Motorola Mobility LLC v. Largan Precision Co., Ltd.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
MOTOROLA MOBILITY LLC,
Appellant
v.
LARGAN PRECISION CO., LTD.,
Appellee
______________________
2024-1414
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2022-
01210.
______________________
Decided: September 15, 2025
______________________
JOHN D. VANDENBERG, Klarquist Sparkman, LLP,
Portland, OR, argued for appellant. Also represented by
SARAH ELISABETH JELSEMA, ANDREW M. MASON, FRANK
MORTON-PARK.
KEVIN RUSSELL, Russell & Woofter LLC, Washington,
DC, argued for appellee. Also represented by DANIEL
WOOFTER; ROBERT PARRISH FREEMAN, JR., Maschoff Bren-
nan P.L.L.C., Park City, UT.
______________________
Case: 24-1414 Document: 44 Page: 1 Filed: 09/15/2025

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MOTOROLA MOBILITY LLC v. LARGAN PRECISION CO., LTD. 2
Before CHEN, LINN, and HUGHES, Circuit Judges.
CHEN, Circuit Judge.
Motorola Mobility LLC (Motorola) appeals the final
written decision of the Patent Trial and Appeal Board
(Board) in an inter partes review upholding claims 1–27 of
Largan Precision Co., Ltd.’s (Largan’s) U.S. Patent No.
9,696,519 (’519 patent). Motorola Mobility LLC v. Largan
Precision Co., Ltd., No. IPR2022-01210, 2024 WL 270788
(P.T.A.B. Jan. 24, 2024) (Decision). We affirm.
BACKGROUND
The ’519 patent concerns an imaging optical lens as-
sembly comprising five lens elements. Claim 1 is repre-
sentative:
1. An imaging optical lens assembly, comprising, in
order from an object side to an image side:
a first lens element with negative refractive power
having an object-side surface being concave in a
paraxial region thereof;
a second lens element having positive refractive
power;
a third lens element having negative refractive
power;
a fourth lens element having positive refractive
power; and
a fifth lens element with negative refractive power
having an image-side surface being concave in a
paraxial region thereof, and at least one convex
shape in an off-axial region on the image-side sur-
face;
wherein the imaging optical lens assembly has a
total of five lens elements;
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MOTOROLA MOBILITY LLC v. LARGAN PRECISION CO., LTD. 3
and wherein a curvature radius of the object-side
surface of the first lens element is R1, a curvature
radius of an object-side surface of the second lens
element is R3, a curvature radius of an image-side
surface of the second lens element is R4, a focal
length of the imaging optical lens assembly is f, a
focal length of the third lens element is f3, a focal
length of the fifth lens element is f5, and the follow-
ing conditions are satisfied:
|R4/R3|<1.0;
f5/f3<1.0;
−10.0<R1/f<0.
’519 patent at claim 1.
Motorola filed an inter partes review petition challeng-
ing claims 1–27 of the ’519 patent as unpatentable under
35 U.S.C. § 103 over Chung1 in view of Sekine,2 both of
which disclose optical lens systems. Motorola argued that
Chung Embodiments 11 and 12 met all claim limitations
except the final R1/f limitation, which Sekine disclosed.
See J.A. 187–95. Motorola further contended that a skilled
artisan would have been motivated to apply Sekine’s R1/f
teaching to Chung to maintain image quality while in-
creasing the field of view. See J.A. 181–82.
Further, Motorola explained that a skilled artisan
would have turned to a lens design program, such as
ZEMAX, to optimize R1/f by balancing competing objec-
tives of a short total track length, a wide field of view, and
improved image quality. J.A. 184. Accordingly, Motorola’s
expert presented ZEMAX modeling evidence to confirm
1 U.S. Patent Application Publ’n No. 2015/0098137
(Chung).
2 U.S. Patent Application Publ’n No. 2013/0182339
(Sekine).
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MOTOROLA MOBILITY LLC v. LARGAN PRECISION CO., LTD. 4
that “a [skilled artisan] would have had a reasonable ex-
pectation of success and required no undue experimenta-
tion” in applying Sekine’s R1/f teachings to Chung. J.A.
184, 237.
The Board found that Motorola did not prove a motiva-
tion to combine Chung with Sekine. See Decision, 2024 WL
270788 at *13–15. The Board highlighted differences in
the systems of Chung and Sekine that would lead a skilled
artisan to doubt that Sekine’s teachings could apply to
Chung. See id. at *13. Even “assuming that Sekine’s
teachings would apply to Chung despite their different sys-
tems,” the Board agreed with Largan that there was insuf-
ficient evidence to support that a skilled artisan would
consider Sekine’s teachings helpful because Sekine dis-
closed an inferior lens system with poorer image quality
and field of view. Id.; see id. at *13–15. The Board did not
consider Motorola’s ZEMAX evidence, which it determined
“were relied on in the Petition only for the purpose of show-
ing a reasonable expectation of success.” Id. at *15. Be-
cause the Board found no motivation to combine, it did not
address reasonable expectation of success. Id.
As a result, the Board concluded that Motorola had not
met its burden of proving the claims are unpatentable. Id.
at *17. This appeal followed. We have jurisdiction pursu-
ant to 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
Motorola argues on appeal that the Board adopted a
legally incorrect framing of the motivation-to-combine ar-
gument by, inter alia, ignoring the asserted motivation and
instead focusing on differences between embodiments of
the references. Specifically, Motorola contends that a
skilled artisan seeking to improve the field of view in
Chung would have looked to Sekine’s R1/f teaching to bal-
ance the wider fields of view with maintaining image qual-
ity and track length.
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MOTOROLA MOBILITY LLC v. LARGAN PRECISION CO., LTD. 5
We are not persuaded the Board committed reversible
error. The Board expressly acknowledged Motorola’s as-
serted motivation, stating, “[p]etitioner contends that a
[skilled artisan] implementing Chung would have been mo-
tivated to incorporate Sekine’s teachings on maintaining
image quality at wider fields of view.” Decision, 2024 WL
270788 at *6; see also id. at *15 (“Petitioner further argues
that Patent Owner ignores that lens design involves
tradeoffs, for example, sacrificing image quality for a wider
FOV.”). The Board considered Motorola’s balancing moti-
vation and rejected it for fact-based reasons.
First, the Board found that a skilled artisan would
have a reason to doubt that Sekine’s R1/f teachings could
have usefully applied to Chung given the “significant dif-
ferences” in the two systems: Chung’s embodiments each
had a negative first lens and a positive second lens, while
Sekine had the opposite configuration.3 Id. at *13–15. Sec-
ond, the Board found that Sekine disclosed an inferior lens
3 Motorola also argues that the Board improperly re-
lied on the differences in lens polarities because Largan
raised this argument in its preliminary response but not in
its post-Institution response. However, the Board properly
considered this argument because Largan re-raised this is-
sue in response to Motorola’s reply. See J.A. 7072 (in its
sur-reply to Motorola’s argument that both systems used
“classic retrofocus concepts,” Largan argued that Sekine
was “not a retrofocus lens system” because it “teaches a
positive front lens element”). Motorola did not move to
strike Largan’s purportedly improper argument below.
Furthermore, even “assuming that Sekine’s teachings
would apply to Chung despite their different systems,” the
Board found insufficient evidence that a skilled artisan
would have considered Sekine’s teachings to improve
Chung, as Sekine disclosed an inferior lens system. Deci-
sion, 2024 WL 270788 at *13–15.
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MOTOROLA MOBILITY LLC v. LARGAN PRECISION CO., LTD. 6
system with poorer image quality and field of view, such
that a skilled artisan would not have looked to Sekine to
improve Chung. Id. at *13–14. Third, the Board found that
Sekine’s teaching of shortening track length would be “in-
applicable” to Chung’s embodiments because of differences
in lens shapes. Id. at *14.
Motorola essentially disputes the Board’s factual find-
ings, which are properly supported by substantial evi-
dence. See J.A. 30–40. Nor was it legal error for the Board
to consider how the embodiments of Chung differed from
the embodiments of Sekine. Motorola’s asserted motiva-
tion depended on balancing image quality, field of view,
and total track length, and the Board’s comparison of the
differences in such values between the two references di-
rectly addressed that balance. See id. at *14.
Motorola additionally argues that the Board improp-
erly limited its ZEMAX optimization evidence as pertain-
ing only to reasonable expectation of success, and thus
erred in not considering it as part of the motivation to com-
bine analysis.
We find no reversible error. Motorola’s ZEMAX evi-
dence simply confirms the combination’s feasibility—that
a skilled artisan could apply Sekine’s teaching to Chung—
not that a skilled artisan would have been motivated to do
so. Indeed, Motorola itself described the evidence as “con-
firm[ing] obviousness,” not independently establishing mo-
tivation. Motorola Op. Br. 18 (emphasis added); see J.A.
184 (“ZEMAX modeling confirms that a [skilled artisan]
would have had a reasonable expectation of success and re-
quired no undue experimentation . . . .”); id. at 195 (same);
J.A. 712, 729 (Motorola’s expert declaration stating same).
The Board also noted that computer-aided optimization of
a lens-system can “lead[] to a nearly infinite variety of pos-
sible combinations of the lens parameters.” Decision, 2024
WL 270788 at *12. The mere fact that a combination is
possible does not establish that a skilled artisan would be
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MOTOROLA MOBILITY LLC v. LARGAN PRECISION CO., LTD. 7
motivated to pursue it. See Adidas AG v. Nike, Inc., 963
F.3d 1355, 1359 (Fed. Cir. 2020) (“The obviousness inquiry
does not merely ask whether a skilled artisan could com-
bine the references, but instead asks whether ‘they would
have been motivated to do so.’”).
Thus, even if the Board erred in characterizing the
ZEMAX evidence as only relevant to reasonable expecta-
tion of success, Motorola has not shown that this evidence
would have altered the Board’s finding of no motivation to
combine the references—a finding that rested on multiple,
factually supported grounds.
We have considered Motorola’s remaining arguments
and find them unpersuasive. For the foregoing reasons, we
affirm.
AFFIRMED
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