- Apple Inc. v. Corephotonics, Ltd.All claims unpatentablePTAB · Dec 7, 2021 · IPR2020-00896 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1–12 are unpatentable: claims 1–11 over the listed §103 grounds, and claim 12 over Chen, Iwasaki, and Beich.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“testimony, and the accompanying Zemax diagrams and we are persuaded that Petitioner establishes that the combination of Ogino and Chen II teaches the limitation recited in claim 4. Petitioner apparently relies on the same motivation to combine Ogino and Chen II as it does for independent claim 1, which we determined above is supported by sufficient rational underpinning with a reasonable expectation of success. See Pet. 26–36; supra § III.E.3.b. Accordingly, we are persuaded that Petitioner establishes unpatentability of claim 4 over the combination of Ogino and Chen II by a preponderance of the evidence.” slip op. at 30
- Skill levelOther
“B. Level of Ordinary Skill in the Art” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“determine that Petitioner’s contentions and Dr. Sasián’s supporting testimony are sufficiently supported by the cited portions of Iwasaki and that Iwasaki teaches each of the limitations of claim 1 and its preamble. Patent Owner does not dispute Petitioner’s showing. For the foregoing reasons, we are persuaded that Petitioner establishes the unpatentability of claim 1 over Iwasaki by a preponderance of the evidence.” slip op. at 17
Patent outcomesUS 10,317,647 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,317,647 - Apple Inc. v. Corephotonics Ltd.All claims unpatentablePTAB · Dec 6, 2021 · IPR2020-00897 · APJ Gregg I Anderson · IPR · Final written decision
Claims 1–24 are unpatentable as obvious over Ogino Example 5 and Bareau; claims 1–3 and 5–8 are also unpatentable over Ogino Example 4 and Bareau.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “(i) a bachelor’s degree in Physics, Optical Sciences, or equivalent training, as well as (ii) approximately three years of experience in designing multi-lens optical systems.” Pet. 7 (citing Ex. 1003, 1111). Petitioner further alleges a person of ordinary skill “would have known how to use lens design software such as Code V, Oslo, or Zemax, and would have taken a lens 9 The Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011) revised 35 U.S.C. §§ 102 and 103, effective March 16, 2013. The ’277 patent has an effective filing date later than March 16, 2013 (see Section II.C, fn. 5). Thus, the grounds asserted are under the AIA version of 35 U.S.C. § 103. 10 Petitioner primarily relies on Examples 4 and 5, but also cites Example 6. See, e.g., Pet. 27. We consider all cited portions of Ogino. 11 Petitioner alternates its citations to the Sasián Declaration (Ex. 1003) between page numbers and paragraph numbers. Compare Pet. 7 (citing page) with Pet. 9 (citing paragraph). We refer to page numbers, which are used more often in the Petition, using paragraph cites when they are referenced. design course.” Id. (citing Ex. 1003 ¶ 19). Patent Owner “does not disagree” with Petitioner’s proposed description of a person of ordinary skill in the art. PO Resp. 12 (citing Ex. 2001 ¶ 20). On this record, and to the extent relevant to our findings, we adopt Petitioner’s proposal which is consistent with the prior art of record.” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“and “total track length” (“TTL”)12 in the final decisions in the ’1140 and ’1146 IPRs. Pet. 8; id. at fn. 2. Specifically, our analysis concluded “effective focal length” is “the focal length of a lens assembly.” ’1140 IPR, Paper 37, 10; ’1146 IPR, Paper 37, 8. We further concluded “total track 12 We also noted in the Institution Decision that Petitioner proposed a different construction of TTL in IPR2020-00877 (“’877 IPR”), which involves the same parties. Inst. Dec. 11. The parties were advised to “address during trial whether and why the construction of this term should differ.” Id. Neither party did so. length” is “the length of the optical axis spacing between the object-side surface of the first lens element and one of: an electronic sensor, a film sensor, and an image plane corresponding to either the electronic sensor or a film sensor.” ’1140 IPR, Paper 37, 10–18; ’1146 IPR, Paper 37, 8–14. The challenged patents in the ’1140 and ’1146 IPRs share common subject matter with the ’277 patent. See Section II.B above. Neither party disputes the constructions of EFL and TTL from the ’1140 or ’1146 IPRs as set forth above. Pet. 8; PO Resp. 13. There is no dispute as to the meaning of EFL or TFL. Accordingly, to the extent relevant and to complete the record, we maintain the above constructions of EFL and TTL for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“2. Remaining claim terms In the Institution Decision, we determined no other claim term required construction. Inst. Dec. 10–11. Both parties agree that the remaining words of the claims do not require express construction and are given their ordinary and customary meaning as understood by a person of ordinary skill in the art. Pet. 8; PO Resp. 13.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We find that Dr. Sasián’s lens design software analysis using the Zemax software shows that L4 and L5 do not touch. See Reply 8–9 (citing Ex. 1037 ¶ 14 (Zemax ray analysis showing L4 and L5 do not touch)).29 Patent Owner disputes the design process used by Dr. Sasián but does not rebut the ray analysis and did not provide a response from Dr. Milster. See Sur-Reply 5–7. In making our finding, we credit Dr. Sasián’s opinion testimony as supported by his ray analysis. Regardless, as we have already found, manufacturing considerations such as touching lenses do not provide a reason not to combine Bureau with Ogino Example 4.” slip op. at 29
Patent outcomesUS 10,324,277 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,324,277 - PTAB · Dec 6, 2021 · IPR2021-00923 · APJ Brent M Dougal · IPR · Institution
The Board instituted inter partes review of claims 1–14 on all petitioned grounds, finding a reasonable likelihood that Apple would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable. See 35 U.S.C. § 314(a). A claim is unpatentable as obvious under 35 U.S.C. § 103 if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). We resolve the question of obviousness based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the prior art and the claims; (3) the level of skill in the art; and (4) when in evidence, objective indicia of nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“(a) Success in Modifying Petitioner argues that “a [person of ordinary skill in the art] would have anticipated success in modifying Mann’s wristwatch based on similarities in functionality and structure of the computer, cameras, and control functionality taught by Mann and Numazaki.” Pet. 20–21. In support of this argument, Petitioner cites to the Bederson Declaration testimony modification would have been well within the skill set of a [person of ordinary skill in the art].” Id. at 21 (citing Ex. 1003 ¶ 46). Petitioner also cites to legal precedent for the proposition that it is “obvious to use known techniques to improve similar devices in the same way.” Id. (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). Petitioner further explains that Mann includes “the requisite structure to capture gestures (i.e., PDA and wristwatch devices with cameras facing that user), and it expressly describes receiving finger-based input to control the operation of the wristwatch,” while “Numazaki similarly describes PDA and wristwatch devices with cameras facing the user such that a user can perform gestures over the devices to exert control over the operation of the device. Id. (citing Ex. 1004, 11–13, 15; Ex. 1005, 52:5–32). Petitioner concludes that “[a] [person of ordinary skill in the art] would have recognized that [the] modif[ication] . . . would have required a straightforward replacement of Mann’s native user-facing imaging with Numazaki’s gesture-recognition hardware” and “a straightforward software update (i.e., adding Numazaki’s gesture detection routines).” Id. at 21–22 (citing Ex. 1003 ¶ 46).” slip op. at 17
- Expert testimonyPetitioner expert discountedOther
“Patent Owner correctly notes that “[t]he Petition [and the declarant] fail[] to provide any explanation or reasoning as to why Numazaki’s no-touch gestures would draw ‘much less’ attention than physically interacting with a watch interface or using a stylus on a PDA.” Prelim. Resp. 9–10. We further note that though the Bederson Declaration testimony makes statements similar to those in the Petition, no support is provided for what appear to be conclusory statements. See Ex. 1003 ¶ 47. Further, the declarant does not identify any experience or expertise in things of a “covert nature.” See id. at App. A (declarant’s resume). Thus, we give the Bederson Declaration testimony little weight on this point. Patent Owner further argues that physical contact with a wristwatch or PDA was the normal way in which one would have expected someone to interact with such a device at the time of the invention. Prelim. Resp. 9. Patent Owner further argues that “no-touch gesture recognition . . . [is] more likely to intrigue the subject and draw their attention.” Id. at 9–10. On this record, Patent Owner’s arguments appear to have merits. Nevertheless, we do not need to determine whether this additional reason to combine by Petitioner is sufficient in light of our determination regarding the first reason to combine.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We apply these principles to the Petition’s challenges. 2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’924 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 5 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. Prelim. Resp. 5. statement is consistent with the problems and solutions in the ’924 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 6
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,194,924 - Bright Data Ltd. v. Metacluster LT, UabInstitution deniedPTAB · Dec 1, 2021 · IPR2021-00983 · APJ Debra K Stephens · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim under the asserted anticipation or obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“(a) THRESHOLD.—The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” slip op. at 2
- Skill levelSkill level board ownOther
“Patent Owner does not contest Petitioner’s assertion (see generally Prelim. Resp.). The prior art itself demonstrates the level of ordinary skill in the art at the time of the invention (see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). in light of Petitioner’s definition of the level of ordinary skill in the art, we determine an ordinarily skilled artisan is: an individual who had (1) a bachelor’s degree or equivalent in the field of Electrical Engineering, Computer Engineering, or Computer Science, or in an equivalent field that includes network engineering as a topic of study (hereinafter, “technical study”), plus at least one year of industry technical experience in the computer network field, such as serving as an engineer for an Internet service provider performing network design, development, or configuration tasks, or as a software developer for network communications software or related utility software, or (2) three years of full-time technical experience in the field of electrical engineering, computer engineering, or computer science or in an equivalent field that includes network engineering or network communications software (hereinafter, “technical fields”), or (3) an equivalent combination of academic study in technical study and work experience in the technical fields.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“Proxy Rotator’ as ‘a system coupled of separate components implementing a specific method and responsible for collecting statistical data, proxy control, rotation, maintenance, and reporting’” (Prelim. Resp. 15 (citing Ex. 1001, 5:4–7)). of separate components implementing a specific method and responsible for collecting statistical data, proxy control, rotation, maintenance, and reporting” (id. at 5:4–7). In accordance with the Specification’s “general terminology description,” we construe the term “Smart Proxy Rotator” as a system coupled of separate components implementing a specific method and responsible for collecting statistical data, proxy control, rotation, maintenance, and reporting.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“construed as “‘the portion of all proxy requests received by the SPR during a time period that the SPR will refer to a particular proxy provider,’ which may be equal to the weight assigned to that particular proxy provider divided by the sum of weights assigned to all proxy providers during the same time period” (Prelim. Resp. 20 (citing Ex. 2003 ¶ 56)). Patent Owner’s definition requiring a “utilization threshold” to be a “portion of all proxy requests received by the SPR during a time period that the SPR will refer to a particular proxy provider” is too narrow. The ’948 Patent does not expressly define the term “utilization threshold,” and, instead, describes utilization thresholds using an example (id. at 8:1–8). The ’948 Patent states [o]ne of the usage examples can be the following: if one provider has a weight equal to 10, and the other provider has a weight equal to 20, the proxy rotator should use the second provider 66.6% of the time and the first provider 33.3% of the time, when no changes to the default providers’ weights have been introduced. These percentages are the utilization thresholds of each provider. threshold is a goal amount of use, not an actual amount of use. A utilization threshold may represent a desired maximum percentage (i.e., proportion), of proxy requests to be referred to a particular proxy provider. Based on the Specification’s use of a “utilization threshold,” we construe the term to mean “a maximum percentage of use assigned to a particular proxy provider that is equal to a weight for the particular proxy provider divided by the sum of respective weights assigned to all proxy providers during the same time period.”” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,601,948 - Juniper Networks, Inc. v. Correct Transmission, LLCInstitution deniedPTAB · Nov 19, 2021 · IPR2021-00984 · APJ Bryan F Moore · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that the asserted obviousness grounds taught or suggested the claimed responsive fragmentation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Applying those standards, and upon consideration of the information presented in the Petition, Preliminary Response, and Reply, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one Challenged Claim of the ’669 patent. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we do not institute an inter partes review of the ’669 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a closely related field, and one to two years of experience in the design and development of network communication systems. Alternatively, a POSITA would have a master’s degree or similar post-graduate work in electrical engineering, computer engineering, computer science, or a closely related field, and fewer years of design and development experience. Pet. 5–6 (citing Ex. 1003 ¶¶ 59–63). “Patent Owner takes no position with respect to Petitioner’s proposed level of skill.” Prelim. Resp. 37. We regard Petitioner’s proposed definition as reasonable, and consistent with the prior art before us. See In re GPAC Inc., 57 F.3d 1573, 3 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. 1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Accordingly, we apply the level of skill set forth above, which also is consistent with the testimony of Dr. Yang. Ex. 1003 ¶¶ 59–63.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Neither Petitioner nor Patent Owner proposes any claim terms for construction. Pet. 6 (“Petitioner construes each term as having its ordinary and customary meaning.”); Prelim. Resp. 11 (“Patent Owner does not propose any claim term departs from its ordinary and customary meaning.”). We do not find that the express construction of any term is necessary for this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“While not showing a teaching away, the above statement in Sourani contrasting stop points and fragmentation does show that one of ordinary skill in the art reading Sourani would know that the stop points in Sourani are not intended to be fragments. Petitioner has not explained sufficiently why, despite this contrast, one of ordinary skill would use fragmentation with the system of Sourani.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,876,669 - American Well Corporation v. Teladoc Health, Inc.Institution deniedPTAB · Nov 15, 2021 · IPR2021-00871 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of proving the Wang-I and Johnson combinations rendered the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the ’000 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Id. (citing Ex. 1003 ¶ 62) (emphasis added). It is not clear, however, whether Petitioner actually asserts that Wang-I discloses a server containing the database recited in claim 1. But, to the extent Petitioner is taking this position, Petitioner fails to explain adequately how arbitrator 250 (even assuming for the sake of argument that arbitrator 250 is a server) contains a database defining a first subset of robots as associated with a first customer ID and a second subset of robots as associated with a second customer ID. Furthermore, we agree with Patent Owner that “Wang-I is completely silent regarding the defining of subsets of the robots, or associating such subsets with a customer ID.” See Prelim. Resp. 27 (citing Ex. 1004 ¶ 23; Ex. 2001 ¶ 69).” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Dr. Rozenblit’s testimony cited by Petitioner merely repeats the Petition’s assertions and does not offer objective evidence or analysis to support the assertion. See Ex. 1003 ¶¶ 62–67. For this reason, we do not credit the testimony of Dr. Rozenblit on this point. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail).” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art would have had at least a Bachelor’s of Science Degree (or equivalent) in an academic area emphasizing electrical engineering, computer engineering, computer science, biomedical engineering, or a related technical field, and at least 2-3 years of experience in the field of robotics, telepresence systems, or both (e.g., familiarity with wireless communication technology, biomedical robotic systems, etc.). Pet. 8 (citing Ex. 1003 ¶¶ 24–25). Patent Owner agrees with Petitioner’s definition for the purposes of this proceeding. Prelim. Resp. 15. Based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 7
§ 103 obviousnesscites GrahamPatents in suitUS 10,059,000 - Apple, Inc. v. Corephotonics Ltd.No claims unpatentablePTAB · Nov 8, 2021 · IPR2020-00906 · APJ John F Horvath · IPR · Final written decision
Claims 19–22 were not shown unpatentable because Petitioner did not establish that Ogata’s lens could be scaled for Parulski’s camera with a reasonable expectation of success.
RulingsFinal written decision- Expert testimonyDecided for patent owner
“first embodiment lens and the data entered into the “Lens Editor Data” spreadsheet are noticeable. First, the Abbe number for the third lens element is 42.72 in Ogata’s first embodiment lens and 26.5 (i.e., 38% smaller) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:46, with Ex. 1021, 36. Second, the data for the fourth and tenth aspherical surfaces are noticeably different. For example, the fourth order term (A4) for the fourth aspherical surface is 0.66 x 10-4 in Ogata’s first embodiment lens and 151.69 x 10-4 (i.e., 0.015) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:55, with Ex. 1021, 36. Neither Petitioner nor Dr. Sasián explain these discrepancies.” slip op. at 15
- Strike new argumentNew argument disregardedDecided for patent owner
“We agree with Patent Owner. The Petition contends that a person of ordinary skill in the art would have known that Ogata’s lens (using glass lens elements) could have been scaled to focus an image onto a 1/2.5” image sensor for use in Parulski’s camera. See Pet. 24–30; Ex. 1021, 36. Petitioner’s reply evidence and argument is not introduced to support that contention but a different contention—that a person of ordinary skill in the art would have known that Ogata’s lens could have been redesigned using aspheric plastic lens elements to focus an image onto a 1/3” image sensor. See n.11, supra. This is a new contention that does not support Petitioner’s 11 We note that Dr. Sasián’s analysis discloses how Kawamura’s lens can be modified by replacing the spherical glass lens elements with aspherical plastic lens elements, moving the aperture stop to the first lens element, changing the F number to 2.8, and reducing the effective focal length to focus an image onto a 1/3” image sensor rather than a 1/2.5” image sensor. See Ex. 1039 ¶¶ 25–30; App’x, 17–18. Dr. Sasián also opines that although this analysis illustrates how Kawamura’s lens could have been modified, a person skilled in the art “would have recognized that Ogata could have been similarly adjusted to yield a miniaturized form-factor.” Id. ¶ 25. because it is a new and untimely contention, we do not consider it further. See Consolidated Trial Practice Guide (Nov. 2019)12 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.”); see also Ariosa Diagnostics v. Verinata Heath, Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015) (“The Board must make judgments about . . . when a Reply contention crosses the line from the responsive to the new.”); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d at 1359, 1369–70 (Fed. Cir. 2016) (affirming the Board’s rejection of a reply argument presenting an “entirely new rationale to explain why one of skill in the art would have been motivated to combine” prior art references); Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019) (affirming the Board’s rejection of a reply argument presenting an “entirely new rationale” for why a claim would have been obvious).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableReasonable expectation not foundNot shown unpatentable
“first embodiment lens and the data entered into the “Lens Editor Data” spreadsheet are noticeable. First, the Abbe number for the third lens element is 42.72 in Ogata’s first embodiment lens and 26.5 (i.e., 38% smaller) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:46, with Ex. 1021, 36. Second, the data for the fourth and tenth aspherical surfaces are noticeably different. For example, the fourth order term (A4) for the fourth aspherical surface is 0.66 x 10-4 in Ogata’s first embodiment lens and 151.69 x 10-4 (i.e., 0.015) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:55, with Ex. 1021, 36. Neither Petitioner nor Dr. Sasián explain these discrepancies.” slip op. at 15
Patent outcomesUS 10,225,479 not shown unpatentable§ 103 obviousnessPatents in suitUS 10,225,479 - Apple, Inc. v. Corephotonics Ltd.No claims unpatentablePTAB · Nov 8, 2021 · IPR2020-00905 · APJ John F Horvath · IPR · Final written decision
Claims 1–16, 18, 23–38, and 40 were not shown unpatentable because the asserted obviousness combinations did not establish a fused image with both Wide perspective and position POV.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In a dual-aperture camera image plane, as seen by each sub-camera (and respective image sensor), a given object will be shifted and have different perspective (shape). This is referred to as point-of-view (POV). The system output image can have the shape and position of either sub-camera image or the shape or position of a combination thereof. If the output image retains the Wide image shape then it has the Wide perspective POV. If it retains the Wide camera position then it has the Wide position POV. The same applies for Tele images position and perspective. As used in this description, the perspective POV may be of the Wide or Tele sub-cameras, while the position POV may shift continuously between the Wide and Tele sub-cameras. In fused images, it is possible to register Tele image pixels to a matching pixel set within the Wide image pixels, in which case the output image will retain the Wide POV ("Wide fusion"). Ex. 1001, 5:10–26.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We find Petitioner sets forth sufficient reasoning with rational underpinning to combine the teachings of Parulski and Konno. Parulski lenses, but fails to give lens prescription data for the two camera lenses. Konno discloses lens prescription data for a dual-lens camera utilizing two thin lenses. The combination, therefore, is one of familiar elements according to known methods to obtain predictable results or a substitution of one element for another known in the field to obtain a predictable result. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. As we explain in § II.D.1, supra, claims 1 and 23 require generating a fused image having a Wide perspective POV and a Wide position POV. Petitioner’s only argument for how the combination of Parulski and Konno teaches this limitation is Parulski’s teaching of generating a fused image having a Wide position POV, i.e., having the field of view (FOV) of the Wide camera. See Pet. Reply 13 (“Parulski teaches . . . producing an output image that maintains the Wide position POV or the field of view of the Wide camera when the image was captured.”). Petitioner fails to demonstrate how Parulski’s image fusion method would also maintain the Wide perspective POV as required by independent claims 1 and 23. Accordingly, for the reasons discussed above, Petitioner has failed to demonstrate by a preponderance of evidence that claims 1 and 23 are unpatentable as obvious over the combination of Parulski and Konno.” slip op. at 21
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Patent Owner argues that Petitioner and Dr. Durand have failed to demonstrate that Parulski teaches “the ‘fused image with a point of view (POV) of the Wide camera’ limitation” because their “sole argument that Parulski meets this limitation is based on the output [image] having the ‘wide image’s field of view.’” PO Resp. 29 (citing Ex. 1003 ¶ 51). Patent Owner further argues that “[n]othing in Parulski suggests that whatever image data from the tele image that might be ‘fused’ into the output would be modified to have the shapes and positions from the wide image POV” and “nothing in Dr. Durand’s declaration even attempts to establish [that] this admitted during his deposition that he had not provided an opinion about whether Parulski generates a fused image having both a Wide perspective POV and a Wide position POV. See PO Sur-Reply 5 (citing Ex. 2041, 52:25–54:20). We agree with Patent Owner. As we explain in § II.D.1, supra, claims 1 and 23 require generating a fused image having a Wide perspective POV and a Wide position POV. Petitioner’s only argument for how the combination of Parulski and Konno teaches this limitation is Parulski’s teaching of generating a fused image having a Wide position POV, i.e., having the field of view (FOV) of the Wide camera. See Pet. Reply 13 (“Parulski teaches . . . producing an output image that maintains the Wide position POV or the field of view of the Wide camera when the image was captured.”). Petitioner fails to demonstrate how Parulski’s image fusion method would also maintain the Wide perspective POV as required by independent claims 1 and 23.” slip op. at 20
Patent outcomesUS 10,225,479 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,225,479 - Apple Inc. v. Corephotonics, Ltd.All claims unpatentablePTAB · Nov 4, 2021 · IPR2020-00860 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1–25 are unpatentable as obvious over the combinations of Golan and Martin, with additional references applied to specific dependent claims.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“For the foregoing reasons, we are persuaded that Petitioner’s rationale” slip op. at 33
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“Petitioner’s copying of the ’942 patent’s technologies from Patent Owner also supports [the] conclusion” of nonobviousness. Id. at 54 (citing Ex. 2015 ¶ 134). Patent Owner presents arguments with respect to the failure of Golan and Border inventors to achieve what is disclosed by the ’942 patent. Id. at 40–41. Patent Owner also asserts: “That Petitioner copied the invention of the ’942 patent (among other Corephotonics technologies, which Petitioner also appears to have copied) is strongly implied by the course of conduct between the parties and the timing of Petitioner’s announcement of their own version of ‘smooth transition’ in their iPhone 7 series in Fall of 2016.” Id. at 56–57 (citing Ex. 2015 ¶ 139).” slip op. at 46
- ExcludeMotion to exclude, deniedDenied
“IV. MOTION TO EXCLUDE Petitioner objected to Patent Owner’s inclusion of Exhibits 2101,” slip op. at 79
Patent outcomesUS 10,326,942 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,326,942 - Apple Inc. v. Corephotonics, Ltd.Rehearing grantedPTAB · Nov 4, 2021 · IPR2020-00487 · APJ Monica S Ullagaddi · IPR · Rehearing
Claims 1–18 are unpatentable under §103: claims 1–4, 7, 10–13, and 16 over Golan and Martin; the remaining claims over combinations adding Ahiska, Levey, or Parulski.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We initially concluded that Petitioner failed to establish a reasonable likelihood of prevailing in demonstrating that the challenged claims are unpatentable. Paper 9 (“Decision Denying Institution” or “DDI”). Specifically, we concluded that Petitioner’s rationale for combining Golan and Martin was not sufficiently supported by a rational underpinning. Dec. 26 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Accordingly, we declined to institute trial on the challenged claims of the ’233 patent. Id. Petitioner filed a request for rehearing (Paper 10, “Rehearing Request” or “Reh’g Req.”) of our Decision Denying Institution. We granted that request and instituted trial (Paper 13, “Institution Decision” or “Inst. Dec.”) on all challenged claims on all grounds set forth in the Petition. Patent Owner filed a Response (Paper 16, “Patent Owner Response” or “PO. Resp.”).1 Petitioner filed a Reply (Paper 25, “Petitioner’s Reply” or “Pet.” slip op. at 2
- Expert testimonyOther
“Dr. Durand testifies that “a POSITA would have understood that Martin’s teachings of critical alignment for stable transition between images of different points of view apply to electronic camera systems providing continuous zoom video output [i]mages as taught in Golan, regardless of whether a three dimensional illusion is provided.” Ex. 1003 ¶ 59. Citing Ahiska (Ex. 1007), Border (Ex. 1009), Orimoto (Ex. 1014), and Hansen (Ex. 1019) to support his testimony, Durand further testifies that It was well known in the art that for seamless transition between two images of different points of views in continuous zoom video applications, when calibration between two cameras (e.g., the electronic calibration of Golan) is not sufficient alone (e.g., because of shocking, vibration, thermal variation, etc.), image registration of two images from two imaging sections for position matching (e.g., critical alignment of Martin) may be used. Id. ¶ 57 (citing Ex. 1007, 4:58–62, 10:2–5; Ex. 1014, 1:63–2:1; Ex. 1019, 1059; Ex. 1009 ¶¶ 41, 42). The portion of Hansen (Ex. 1019) cited by Dr. Durand addresses how extrinsic calibration errors occur and “a method to recalibrate extrinsic parameters online to correct drift or bias.” Ex. 1019, 1059 (emphasis omitted). Orimoto discloses how misalignment occurs, irrespective of “how exactly the dual lens camera has been conditioned and adjusted by the manufacturer.” Ex. 1014, 1:63–2:1. Border addresses image registration as an alternative to correspondence (i.e., calibration). Ex. 1009 ¶¶ 41, 42. And Ahiska disclose image registration or matching, when calibration is insufficient, to provide a seamless transition between master and slave cameras and “create the quality of a continuous zoom function.” Ex. 1007, 4:58–62, 10:2–5 (“[i]f calibration between the [wide-angle] master and slave cameras is insufficient alone, image registration or matching can be carried out,” “transition[ing] between the master view and the slave view as seamlessly as possible to create the quality of a continuous zoom function”). Petitioner’s third and fourth reasons for combining Golan and Martin are supported by Dr. Durand’s testimony quoted above, which is in turn supported by Ahiska and Border. The portions of Border cited by Dr. Durand address image registration as an alternative to correspondence (i.e., calibration). Ex. 1009 ¶¶ 41, 42. The portions of Ahiska cited by Dr. Durand address the additional step of image registration or matching, when calibration is insufficient, to provide a seamless transition between master and slave cameras and “create the quality of a continuous zoom function.” Ex. 1007, 4:58–62, 10:2–5. Thus, each of Border and Ahiska show a relation between electronic calibration and registration. As such, and for the foregoing reasons, we are persuaded that Petitioner’s rationale for combining Golan and Martin is supported by sufficient rational underpinning, based on the entirety of the record developed at trial. See KSR, 550 at 418.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends [A] Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or the equivalent degree in electrical and/or computer engineering or a related field and 2–3 years of experience in imaging systems including optics and image processing. Pet. 5. Petitioner supports its contention with the testimony of Dr. Durand. Ex. 1003 ¶ 17. Patent Owner “adopts Petitioner’s definition of the level of ordinary skill. . . .” PO Resp. 7 (citing Pet. 3; Ex. 2015 ¶¶ 31–33). The level of ordinary skill in the art proposed by Petitioner is consistent with the ’233 patent and the asserted prior art. Where pertinent, we apply Petitioner’s definition in making the findings and conclusions rendered in this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“understood ‘reduce an image jump effect seen in video output images’ to mean “reduce a discontinuous image change in video output images.’” Pet. 6 (citing Ex. 1003 ¶¶ 41–43). Petitioner asserts the Specification supports this proposed construction. Id. (citing Ex. 1001, 10:30–40). Patent Owner “adopts, for this IPR proceeding only, Petitioner’s proposed construction for the phrase ‘reduce an image jump effect seen in video output images’ and appl[ies] it in [its] analysis herein.” PO Resp. 8 (citing Ex. 2015 ¶¶ 34–36). We do not discern a dispute between the parties regarding this limitation and we need not expressly construe this limitation to resolve the controversy before us. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,661,233
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.