Apple Inc v. Corephotonics Ltd

1. Case Identification

• Case #: IPR2018-01133
• Patent #: 9,538,152
• Filed: May 22, 2018
• Petitioner(s): Apple Inc.
• Patent Owner(s): Corephotonics, Ltd.
• Challenged Claims: 1-4

2. Patent Overview

• Title: Multi-Aperture Imaging System
• Brief Description: The ’152 patent relates to a multi-aperture imaging system, particularly for compact devices like camera phones. The system uses two cameras—one with a wide field of view (FOV) and one with a telephoto FOV—and a processor to create a fused output image, providing optical zoom capabilities and high color resolution while maintaining a thin profile.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 are obvious over Border in view of Parulski.

• Prior Art Relied Upon: Border (Application # 2008/0030592) and Parulski (Patent 7,859,588).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Border teaches the core elements of the challenged claims. Border discloses a dual-aperture digital camera with two lenses of different focal lengths (wide and telephoto) and corresponding image sensors to provide an extended zoom range. Its sensors use a "well-known Bayer color filter pattern," satisfying the "standard color filter array (CFA)" limitation. Border's processor receives a "zoom amount" input from the user and generates a composite image by combining the wide and telephoto images. For zoom levels between the native FOVs of the two cameras, Border stitches the higher-resolution telephoto image into the wide image, effectively using the wide image as the baseline for registration and point of view. This process, Petitioner argued, inherently teaches producing an output image from the first camera's point of view based on a zoom factor (ZF) input. While Border does not use the terms "primary" and "non-primary," Petitioner contended that Parulski, an analogous reference, supplies this terminology and the explicit concept of using a secondary image to augment a primary image. Parulski's teachings on designating primary/secondary roles for image enhancement were argued to be directly applicable to Border's system of registering the telephoto image onto the wide image.
  • Motivation to Combine (for §103 grounds): Petitioner provided three primary motivations for combining the references. First, Border and Parulski are analogous art from the same field (multi-lens digital cameras) addressing the shared problem of improving output image quality. Second, a person of ordinary skill in the art (POSITA) would naturally consider the references together, as they share a common inventor (John N. Border) and assignee (Eastman Kodak Company). Third, Parulski provides an express motivation by incorporating Border by reference and explicitly stating that its image augmentation methods can be applied to "image pairs having different resolutions," such as the wide and telephoto images described in Border.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in combining the references because applying Parulski's established image augmentation and primary/secondary image concepts to Border's dual-camera architecture would predictably yield the benefit of enhanced image quality (e.g., improved dynamic range, sharpness) without requiring undue experimentation.
  • Key Aspects: The argument heavily relied on showing that Border's processor, which creates a composite image based on different user-selected zoom amounts (Z), inherently teaches the key limitation of switching the output image's point of view. For a zoom factor between the wide and telephoto camera's native views, Border's stitching method maintains the wide camera's point of view, satisfying a central limitation of independent claim 1. For a zoom factor equal to the telephoto's native view, Border teaches using the telephoto image as the output, satisfying the limitation of dependent claim 2.

4. Key Claim Construction Positions

• "standard color filter array (CFA)" (claims 1 and 3): Petitioner argued this term should be construed to mean "a color filter array including a RGB (Bayer) pattern, RGBE, CYYM, CYGM, RGBW#1, RGBW#2, or RGBW#3." This construction is based on the patent’s express definition. The construction is critical to the obviousness argument, as the primary reference, Border, explicitly discloses using the "well-known Bayer color filter pattern" for its image sensors, thereby directly teaching this claim limitation under the proposed construction.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. Although the primary reference, Border, was listed in an Information Disclosure Statement (IDS) during prosecution, it was never substantively discussed or applied by the Examiner. Furthermore, the secondary reference, Parulski, was not cited or considered by the Office at all. Therefore, Petitioner contended that the specific combination of Border and Parulski, and the arguments based on that combination, present a new question of patentability that the Patent Office has not previously considered, warranting institution of the inter partes review (IPR).

6. Relief Requested

• Petitioner requested the institution of an IPR and the cancellation of claims 1-4 of the ’152 patent as unpatentable.