The Software IP Report

Fed. Cir. Claim Construction Focuses on Meaning of “A”

In Apple v Corephotonics, the Federal Circuit vacated and remanded a final decision of the PTAB holding that Apple failed to show that challenged claims of U.S. Patent No. 10,225,479 were obvious. Curiously, the Federal Circuit relied on patentees use of “a” when conducting claim interpretation of a point of view (POV) of the Wide camera.

The ‘479 patent is owned by Corephotonics and is directed to a dual aperture camera that combines an out-of-focus image from a sub-camera that has a wide lens with an in-focus image from a sub-camera with that has a telephoto lens. The images from the sub-cameras are fused(e.g., in portrait mode) to create a single image having an in-focus subject and blurred background. Representative claim 1, in relevant part, recites:

the camera controller is further operative to output the fused image with a point of view (POV) of the Wide camera by mapping Tele image pixels to matching pixels within the Wide image.

The specification of the ‘479 patent gives special meaning to “point-of-view.” Specifically, the specification explains that “[i]n 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 specification goes on to further explain that a “Wide position POV” is a POV in which the object changed position, and that a “Wide perspective POV” is a POV in which the object changed shape.

During the PTAB proceeding initiated by Apple, the parties disputed construction of “apoint of view (POV) of the Wide camera.” Apple argued for a broader meaning, namely that “apoint of view (POV)” as used in the claims means the Wide perspective POV or the Wide position POV. Corephotonics argued for a narrower meaning, namely that “a point of view (POV)” means both Wide perspective POV and Wide position POV. The Board acknowledged that the specification was as “not a model of clarity,” but ultimately agreed with Corephotonicsthat POV includes both the position POV and perspective POV. Using the narrower construction, the Board held that Apple had failed to show that the challenged claims were unpatentable.

On appeal, the Federal Circuit first noted that the claim language itself did not clearly resolve the question of claim construct and that the specification was also not cut and dry. For example, in addition to giving POV a special meaning, the specification also included embodiments that were outside this special meaning and used just the Wide perspective POV or just the Wide position POV. To resolve the question other whether the PTAB unduly narrowed the claims, the Federal Circuit relied on the claim recitation of a point of view of the Wide camera” (emphasis from Fed. Cir.). The Court reasoned that “a” means one POV whereas the specification describes multiple possibles POVs (position and perspective). The Court compared the actual claim language in dispute of “a point of view with hypothetical claim language of “the Wide camera’s point of view.” The Court posited that “the Wide camera’s point of view” would have included both the Wide perspective POV and the Wide position POV, and, as such, “a” point of view of the Wide camera could mean either POVultimately determining that the narrow construction given by the PTAB was improper and vacating their determination. The Court bolstered its decision by pointing out that patentee failed to provide an indication in the claims or the specification of an intended narrower construction.

The arguments and rationale put forth by the Federal Circuit in this case are rather novel.For example, the Court appears to be construing the claims to have a specific meaning based on the standard practice of introducing elements with “a” for proper antecedent basis where the Court’s hypothetical recitation of “the Wide camera’s point of view” could likely be subject to rejection under section 112(b). In other words, it is highly unlikely that patentee selected “a” with an intention of imparting a specific meaning to the claim. On balance however, the patentee could have written a clearer specification and/or claims but chose not to. In such cases a broader interpretation is in line with caselaw. See, e.g., Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 1317, 1327 (Fed. Cir. 2023).

The Federal Circuit in this case also addressed another determination at the PTAB involving the parties and ‘459 patent. This second determination by the PTAB was also vacated by the Federal Circuit because the PTAB based the second determination on sua sponte findings that lacked substantial evidence and without providing proper notice to the parties.

Lessons for Practice

This case, first and foremost, highlights the importance of diverse claim sets. For example, the issue would likely have been nonexistent if the dependent claims recited out one or both of the Wide perspective POV and the Wide position POV – providing broader coverage with the independent claim (e.g., as interpreted with the doctrine of claim differentiation) and narrower coverage to better survive prior art based challenges. This case is also a good reminder to prosecutors that in litigation claim construction arguments may include positions you would never consider. Accordingly, it is best to bolster your specification and draft your claims with a belt and suspenders approach that both uses the specification to thoroughly flesh out the subject matter, including providing clear patentee lexigraphy when intended, and uses claim sets that are sufficiently broad to cover as many embodiments as possible and are sufficiently narrow to focus on individual embodiments and other details for back up.