Corephotonics, Ltd. v. Apple Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
COREPHOTONICS, LTD.,
Appellant
v.
APPLE INC.,
Appellee
ANDREW HIRSHFELD, PERFORMING THE
FUNCTIONS AND DUTIES OF THE UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND DIRECTOR OF
THE UNITED STATES PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________
2020-1425
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
01133.
______________________
Decided: May 20, 2021
______________________
ROBERT J. G AJARSA , Russ August & Kabat, Washing-
ton, DC, argued for appellant. Also represented by M ARC
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COREPHOTONICS , LTD . v. APPLE INC. 2
AARON FENSTER, NEIL RUBIN , Los Angeles, CA.
ANGELA O LIVER, Haynes & Boone, LLP, Washington,
DC, argued for appellee. Also represented by ANDREW S.
EHMKE, DEBRA J ANECE M CCOMAS , Dallas, TX; D AVID W.
O'BRIEN , H ONG SHI, Austin, TX.
M AUREEN D ONOVAN Q UELER, Office of the Solicitor,
United States Patent and Trademark Office, Alexandria,
VA, for intervenor. Also represented by M ICHAEL S.
FORMAN , THOMAS W. K RAUSE , FARHEENA Y ASMEEN
RASHEED .
______________________
Before NEWMAN , REYNA, and TARANTO , Circuit Judges.
REYNA, Circuit Judge.
Corephotonics, Ltd. appeals a final written decision of
the Patent Trial and Appeal Board in an inter partes re-
view brought by Apple Inc. Corephotonics argues that the
Board issued its decision in violation of the Appointments
Clause because the Board’s decision came after this court’s
decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d
1320, 1335 (Fed. Cir. 2019) but before this court issued its
mandate. On this basis, Corephotonics argues that the
Board’s decision should be vacated and remanded. On the
merits, Corephotonics argues that substantial evidence
does not support the Board’s findings as to patentability.
Because we determine that the Board issued its decision
after this court’s decision in Arthrex we decline to vacate
and remand the Board’s decision underlying this appeal.
Moreover, because substantial evidence supports the
Board’s patentability determination, we affirm.
BACKGROUND
On May 22, 2018, Apple Inc. (“Apple”) filed a petition
for inter partes review at the Patent Trial and Appeal
Board (“Board”), asserting that claims 1–4 of U.S. Patent
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COREPHOTONICS , LTD . v. APPLE INC. 3
No. 9,538,152 (the “’152 patent”) would have been obvious
over U.S. Patent Publication No. 2008/0030592 to Border
et al. (“Border”) in view of U.S. Patent No. 7,859,588 to Pa-
rulski et al. (“Parulski”). J.A. 102.
The ’152 patent is directed to a “multi-aperture imag-
ing system comprising a first camera with a first sensor
that captures a first image and a second camera with a sec-
ond sensor that captures a second image.” ’152 patent, Ab-
stract. The ’152 patent discloses a dual-aperture camera
used to capture synchronous images from both a wide-an-
gle lens and a miniature telephoto lens with higher resolu-
tion in a narrower field. Id., col. 2, ll. 30–43; see also id. col.
2 l. 64–col. 3 l. 10. A “different magnification image of the
same scene is grabbed by each subset, resulting in field of
view (FOV) overlap between the two subsets.” ’152 patent
at col. 3 ll. 11–14. The wide-angle and telephoto images
are then fused to output one combined image. Id. at col. 3
ll. 11–24.
The claims of the ’152 patent require a processor con-
figured to “register the overlap area” of a “second image as
non-primary image” to a “first image as primary image to
obtain the output image,” where the output image must be
from either the “point of view of the first camera” or the
“point of the view of the second camera.” Id. at col. 13 ll.
5–17. The image registration enables the “output image
point of view” to be “determined according to the primary
image point of view (camera angle).” Id. at col. 9 ll. 26–29.
As a result of this image registration process, “the point of
view of the output image is that of the first camera,” if the
field of view, or FOV, of the second camera (2) is less than
the FOV of the first camera (1) based on a zoom factor (ZF)
input, or if FOV2 <FOVZF <FOV1 . Id. at col. 13 ll. 8–11.1
1 The patent further explains how the first or second
image become the primary image as follows: the “choice of
the Wide image or the Tele image as the primary and
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COREPHOTONICS , LTD . v. APPLE INC. 4
Specifically, the representative asserted claims of the ’152
patent recite:
1. A multi-aperture imaging system comprising:
a) a first camera that provides a first image, the
first camera having a first field of view (FOV1 ) and
a first sensor with a first plurality of sensor pixels
covered at least in part with a standard color filter
array (CFA);
b) a second camera that provides a second image,
the second camera having a second field of view
(FOV2 ) such that FOV2 <FOV1 and a second sensor
with a second plurality of sensor pixels, the second
plurality of sensor pixels being either Clear or cov-
ered with a standard CFA, the second image hav-
ing an overlap area with the first image; and
c) a processor configured to provide an output im-
age from a point of view of the first camera based
on a zoom factor (ZF) input that defines a respec-
tive field of view (FOVZF ), the first image being a
primary image and the second image being a non-
primary image, wherein if FOV 2<FOV ZF<FOV 1
then the point of view of the output image is
that of the first camera, the processor further
configured to register the overlap area of the
auxiliary images is based on the ZF chosen for the output
image. If the chosen ZF is larger than the ratio between
the focal-lengths of the Tele and Wide cameras, the Tele
image is set to be the primary image and the Wide image
is set to be the auxiliary image. If the chosen ZF is smaller
than or equal to the ratio between the focal-lengths of the
Tele and Wide cameras, the Wide image is set to be the
primary image and the Tele image is set to be the auxiliary
image.” ’152 patent col. 9 ll. 33–40.
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COREPHOTONICS , LTD . v. APPLE INC. 5
second image as non-primary image to the first im-
age as primary image to obtain the output image.
2. The multi-aperture imaging system of claim 1,
wherein, if FOV2 FOVZF , then the processor is
further configured to provide an output image from
a point of view of the second camera.
’152 patent col. 12 l. 59–col. 13 l. 17 (emphasis added).2
The Board issued its final written decision on Decem-
ber 2, 2019, concluding that all challenged claims are un-
patentable as obvious. J.A. 1–33; see also Apple Inc. v.
Corephotonics Ltd., IPR2018-01133, 2019 WL6523190
(P.T.A.B. Dec. 2, 2019). Of particular importance to the
merits of this appeal, the Board found that the Border ref-
erence disclosed the limitation “the point of view of the out-
put image is that of the first camera” appearing in claim 1.
J.A. 24.
Corephotonics appeals. This court has jurisdiction pur-
suant to 28 U.S.C. § 1295(a)(4)(A).
D ISCUSSION
This court reviews the Board’s factual determinations
for substantial evidence and its legal determinations de
novo. In re Stepan Co., 868 F.3d 1342, 1345 (Fed. Cir.
2017). Obviousness is a question of law based on subsidi-
ary findings of fact. Id.
I
Before reaching the merits, we address Corephotonics,
Ltd.’s (“Corephotonics”) initial argument. Corephotonics
argues that the Board’s decision was issued in violation of
the Appointments Clause because the Board issued its
2 Claims 3 and 4 parallel the limitations of claims 1
and 2, but are method claims rather than system claims.
’152 patent col. 13 l. 18–col. 14 l. 22.
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COREPHOTONICS , LTD . v. APPLE INC. 6
final written decision on December 2, 2019, which was af-
ter this court’s decision in Arthrex, but before the associ-
ated mandate was issued. Specifically, Corephotonics
contends that only the mandate in Arthrex would have or-
dered compliance by the agency to this court’s opinion in
Arthrex.
In Caterpillar, this court determined that final written
decisions issued by the Board after the Arthrex decision do
not require a remand because they do not implicate the Ap-
pointments Clause issues raised in Arthrex. See Caterpil-
lar Paving Prods. Inc. v. Wirtgen Am., Inc., 957 F.3d 1342,
1343 (Fed. Cir. 2020) (denying a motion to vacate and re-
mand based on Arthrex where the Board’s decision issued
in November 2019, after the opinion in Arthrex). While the
appellant in Caterpillar may not have raised the specific
argument regarding the mandate implication that Core-
photonics raises here, we see no reason to depart from our
holding in Caterpillar for purposes of resolving this appeal.
Accordingly, we decline to vacate the Board’s decision and
remand to the Board.
II
As to the merits of its appeal, Corephotonics argues
that substantial evidence does not support the Board’s
finding because Border does not teach providing “an output
image from a point of view of the first camera,” as required
by the claims. ’152 patent col. 13 ll. 5–6. Instead, Corepho-
tonics contends that Border teaches stitching two images
together to provide a composite image with portions from
the point of view of the first camera and other portions from
the point of view of the second camera. Appellant’s Br. 1–
2, 13. In other words, Border’s teaching produces a compo-
site image with parts having two different points of view,
not an image with the “point of view of the first camera.”
Id.
The Board concluded that Border’s express disclosure
of transforming coordinates from the telephoto to the wide-
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COREPHOTONICS , LTD . v. APPLE INC. 7
angle image, along with the testimony of Apple’s expert,
Dr. Oliver Cossairt, is sufficient to meet the limitation.
J.A. 24. We agree. Specifically, Border states that it
“transforms the coordinates of the telephoto image 206 to
the wide image 204.” Border at ¶ 38 (J.A. 694). In addi-
tion, Dr. Cossairt testified that transforming the coordi-
nates has the effect of making the telephoto portion of the
composite image have the same point of view as the wide
image. J.A. 19; see also J.A. 651–52 (Declaration of Dr. Ol-
iver Cossairt). Notably, Corephotonics’s expert did not,
and could not, testify to the contrary as he stated that he
was not an expert on this particular topic. J.A. 19; see also
J.A. 1553–54 (Declaration of Dr. James Koshmach). Ac-
cordingly, because substantial evidence supports the
Board’s determination, we affirm. The court has consid-
ered the remainder of Corephotonic’s arguments and finds
them unpersuasive.
CONCLUSION
The court declines to vacate and remand the Board’s
decision in view of Arthrex, because the final written deci-
sion underlying this appeal issued after this court issued
its decision in Arthrex. In addition, substantial evidence
supports the Board’s well-reasoned decision, and thus the
court affirms the Board’s unpatentability findings as to
claims 1–4 of the ’152 patent.
AFFIRMED
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