Apple Inc v. Corephotonics Ltd

1. Case Identification

• Case #: IPR2018-01348
• Patent #: 9,185,291
• Filed: July 13, 2018
• Petitioner(s): Apple Inc.
• Patent Owner(s): Corephotonics, Ltd.
• Challenged Claims: 1-7, 10, and 12-13

2. Patent Overview

• Title: Dual Aperture Zoom Digital Camera
• Brief Description: The ’291 patent describes a dual-aperture digital camera, suitable for a cell phone, with both a Wide and a Tele sub-camera. The camera is configured to operate in both still and video modes, achieving zoom "with fusion" in still mode by combining image data from both sensors, and "without fusion" in video mode by switching between the sensors to enable a high video frame rate.

3. Grounds for Unpatentability

Ground 1: Obviousness over Parulski, Christie, and Golan - Claims 1-5, 10, and 12-13 are obvious over Parulski in view of Christie and Golan.

• Prior Art Relied Upon: Parulski (Patent 7,859,588), Christie (Application # 2014/0362274), and Golan (Application # 2012/0026366).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Parulski disclosed the foundational dual-lens digital camera system, including a wide-angle and telephoto lens, capable of operating in both still and video modes and combining images to produce an "improved output image." However, Parulski applied its image augmentation process in both modes. Christie taught the specific concept of differentiating processing between still and video modes for power conservation, teaching that High Dynamic Range (HDR) image fusion should be available in still mode but not in video mode to reduce computational load and enable higher frame rates. Golan addressed the problem of creating a smooth, continuous video zoom when switching between two different fixed-focal-length sensors, teaching a method to do so without fusion by selecting the output from only one sensor at a time based on the zoom factor.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Christie's mode-differentiated fusion approach with Parulski’s dual-lens camera to achieve the predictable benefits of higher quality still images, improved battery life, and higher video frame rates. A POSITA would then incorporate Golan's techniques for non-fusion, continuous video zoom to improve the system of Parulski/Christie by reducing discontinuity when switching between the wide and tele sensors during video recording, a known challenge in such systems.
  • Expectation of Success: A POSITA would have a high expectation of success, as the combination involved applying known techniques (mode-specific processing from Christie, smooth sensor switching from Golan) to a known dual-camera architecture (Parulski) to solve well-understood problems and achieve predictable improvements.

Ground 2: Obviousness over Parulski, Christie, Golan, and Konno - Claims 6-7 are obvious over Parulski in view of Christie, Golan, and Konno.

• Prior Art Relied Upon: Parulski (Patent 7,859,588), Christie (Application # 2014/0362274), Golan (Application # 2012/0026366), and Konno (Japanese Application # JP2013-106289).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1, adding Konno to address the limitations of dependent claims 6 and 7. Claim 6 required the Tele lens to have a ratio of total track length (TTL) to effective focal length (EFL) of less than 1. Claim 7 required each lens to include five lens elements. Konno explicitly taught optical designs for thin, high-performance, low-cost dual-lens systems for mobile phones. It disclosed specific lens configurations, including a Tele lens design satisfying the TTL/EFL ratio of less than 1 (Conditional Expression 6) and examples where both the wide and tele lenses were constructed with five distinct lens elements.
  • Motivation to Combine: A POSITA tasked with implementing the dual-lens camera of Ground 1 in a thin device like a mobile phone would be motivated to consult prior art like Konno. Konno directly addressed the goal of creating a "high-performance thin and small-sized imaging apparatus" at low cost. Implementing Konno's lens designs into the Parulski/Christie/Golan system was presented as a straightforward application of a known design choice to achieve the desired physical form factor and performance characteristics.
  • Expectation of Success: Success was expected because Konno provided detailed, specific optical designs intended for the very application (mobile dual-lens cameras) being developed in the primary combination.

4. Key Claim Construction Positions

• "a fused output image" (claims 1 and 12): Petitioner contended this term should be construed as "an output image including information from two images." This construction was argued to be supported by the specification, which consistently contrasted the still mode's use of "fusion" (combining W and T images) with the video mode's operation "without fusion" (switching between W and T images). This distinction was central to Petitioner's argument that the prior art taught the claimed mode-specific processing.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was not warranted. Although the Golan reference was cited during the patent's prosecution, it was never substantively discussed by the Examiner. Furthermore, the core of the challenge relied on a specific combination of Parulski, Christie, and Golan, which had never been considered by the Patent Office. Therefore, the petition raised new questions of patentability that were not previously evaluated.

6. Relief Requested

• Petitioner requested the Board institute an inter partes review of claims 1-7, 10, and 12-13 of the ’291 patent and cancel each of those claims as unpatentable.