The Software IP Report

Fed. Cir. Focuses on the Facts in PTAB Appeal

The saga between Apple and Corephotonics continues in Corephotonics, Ltd. v. Apple Inc. where the Federal Circuit vacated and remanded final decisions of the PTAB concluding that challenged claims of 9,661,233 (“’233 patent”), 10,230,898 (“’898 patent”), 10,326,942 (“’942 patent”), and 10,356,332 (“’332 patent”) (collectively, the “Challenged Patents”) are unpatentable as obvious. In vacating the decisions, the Federal Circuit point to a failure of the PTAB to explain why certain prior art is (or is not) analogous art.

The Challenged Patents are owned by Corephotonics and are directed to a dual aperture camera that has one sub-camera with a wide lens and another sub-camera with a telephoto lens. The Challenged Patents share a common specification.

In the IPR, Apple relied on U.S. Patent Application Publication No. 2012/0026366 (“Golan”) and U.S. Patent No. 8,081,206 (“Martin”) in the obviousness grounds it presented in its IPR petitions. Golan describes camera systems using multiple imaging sensors and lens assemblies to zoom without using a lens with a mechanically adjustable focal length. Martin describes methods “for producing two-dimensional images that, upon display, can be perceived to be three-dimensional without the use of special viewing aids.” The method include capturing images of the same scene from two different points of view, i.e., parallax images, and then displaying the images in an alternating fashion to the viewer to create the appearance of three-dimensionality.

Apple, in its petitions for institution and attached expert declarations, said that Golan and Martin “are analogous prior art and are in the same field of endeavor.” However, this statement is ambiguous as to whether Golan and Martin are in the same field of endeavor as each other, or if they are in the same field of endeavor as the Challenged Patents. Further, the petitions did not explicitly contend that Golan and Martin are pertinent to the problem faced by the inventors of the Challenged Patents.

Corephotonics, in its patent owner responses, pointed out what it contended was a deficiency in how Apple had addressed the analogous art issue. Specifically, Corephotonics argued that Apple’s expert declaration “appears to be limited to comparing Golan and Martin with one another and opining that they are in the ‘same field of endeavor,’” which “is insufficient because it fails to apply the correct legal test and yield the correct analysis for whether Golan and Martin are analogous art.”

Apple’s replies to the patent owner responses clarified that its position was that the Challenged Patents, Golan, and Martin are all in the same field of endeavor. Further, the replies added, for the first time, that Golan and Martin were also pertinent to the problem faced by the inventors of the Challenged Patents. These replies were criticized by Corephonics as raising new arguments.

Whether Golan and Martin were analogous art and the related issues were extensively discussed during oral arguments. Ultimately, the PTAB agreed with Corephotonics that Apple’s treatment of the analogous art issue in its petitions had been deficient, but went on to explain that Apple’s replies had “rectifie[d] the improper comparison and asserted that Golan and Martin are in the same field of endeavor as the claimed invention.” The PTAB found that Golan is in the same field of endeavor as the claimed invention and that Martin is reasonably pertinent to the problem faced by the inventor. To support these finding, the PTAB concluded that “Martin is reasonably pertinent to the problem faced by the inventor: reducing an image jump effect seen in video output images when switching between cameras that have different fields of view. Both Golan and Martin have multiple cameras with differing fields of view.”

Corephotonics appealed the PTAB decisions, arguing that the PTAB made procuderal and substantive errors in its analysis.

With respect to procedure, Corephotonics argued that Apple should not have been allowed to rectify its position with respect to Challenged Patents, Golan, and Martin all being in the same field of endeavor. The Federal Circuit rejected this argument – pointing out that petition’s reply cannot provide a new theory or unpatentability, but rather must be responsive to the patent owner’s contentions or the Board’s institution decision. In this case, Apple wasresponding to Apple’s contentions regarding the issue of analogous art.

With respect to substantive error, both Apple and Corephotonics agree that rational relied on by the PTAB, as written, was incorrect. Specifically, the parties agreed that Martin does not disclose switching between cameras with different fields of view. Based on this error of fact in the PTAB determinations, the Federal Circuit explained that they were unable to discern if the error was merely harmless typographical and harmless or, instead, a potentially-impactful error of substance. At bottom, the Federal Circuit was left uncertain of the PTAB’s reasoning and remanded for further explanation and/or fact finding.

Lessons for Practice

The main take-away from this case is that a review of the facts as stated by in a PTAB decision (or other decision/opinion of a lower court) should be carefully reviewed for accuracy, as inaccurate statements of fact (unless clearly typographic errors) provide ripe grounds for appeal.

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