Apple Inc v. Yu Yanbin

1. Case Identification

• Case #: IPR2019-01258
• Patent #: 6,611,289
• Filed: June 21, 2019
• Petitioner(s): Apple Inc.
• Patent Owner(s): Yu et al.
• Challenged Claims: 1-5

2. Patent Overview

• Title: Digital cameras using multiple sensors with multiple lenses
• Brief Description: The ’289 patent discloses an improved digital camera that uses multiple image sensors, each with its own lens. The system is designed to produce high-quality images by combining output from at least one sensor that is sensitive to the full visible color spectrum (i.e., a monochrome/intensity sensor) with output from other sensors that are sensitive to specific primary colors.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Yamazaki - Claims 1-2 are anticipated under 35 U.S.C. §102(b) by Yamazaki, and in the alternative, are obvious under §103 over Yamazaki.

• Prior Art Relied Upon: Yamazaki (Patent 5,694,165).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Yamazaki, which describes a high-definition image-taking apparatus with multiple image sensors, discloses every limitation of claims 1 and 2. Specifically, Yamazaki’s Embodiment 1 teaches a digital camera with two image sensors (31A, 31B) positioned on a common plane, each with its own lens (3A, 3B). Critically, Petitioner asserted that because Yamazaki explicitly adds color filters in a different embodiment (Embodiment 3), a POSITA would understand that Embodiment 1’s sensors lack color filters. Under Petitioner’s proposed claim construction, these filterless sensors are "sensitive to a full region of visible color spectrum," thus meeting the key limitations of claims 1 and 2. Yamazaki further disclosed the required analog-to-digital circuitry, memory, and a digital image processor that combines the images to create a high-resolution resultant image.
  • Motivation to Combine (for §103 grounds): As an alternative, Petitioner contended that if a single embodiment of Yamazaki were found not to disclose all limitations, a POSITA would have been motivated to combine teachings from Yamazaki's different embodiments. The predictable result would be the arrangement of claim 1.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as combining features explicitly taught within a single reference for their stated purposes is routine.

Ground 2: Obviousness over Weldy, Denyer, and Nagumo - Claims 1 and 3 are obvious over Weldy in view of Denyer and Nagumo.

• Prior Art Relied Upon: Weldy (EP Application # EP0858208A1), Denyer (WO # 93/11631), and Nagumo (Patent 4,506,294).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Weldy taught the core concept of a multi-lens digital camera using a combination of a high-resolution monochrome sensor (sensitive to the full spectrum) and lower-resolution color sensors (sensitive to selected ranges). Weldy disclosed a four-lens camera with one monochrome sensor and three single-color sensors. However, Weldy did not explicitly teach placing the sensors on a common plane. Denyer was introduced to supply this teaching, as it explicitly disclosed the benefits of placing multiple sensors in the same plane to reduce alignment errors and simplify calibration. Nagumo was added to provide an explicit teaching of individual analog-to-digital converters for each image sensor to enable parallel processing and increase signal throughput, a detail Petitioner argued was only suggested in Weldy.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Weldy with Denyer to gain the predictable benefits of improved image quality and easier calibration by placing Weldy's multiple sensors on a common plane as taught by Denyer. A POSITA would further incorporate Nagumo's parallel A/D converter architecture into the Weldy/Denyer system to achieve more efficient digitization and higher throughput, a known engineering goal for which Nagumo provided a well-understood solution.
  • Expectation of Success (for §103 grounds): A POSITA would expect success in combining these references, as it involved applying a known alignment technique (Denyer) and a standard processing architecture (Nagumo) to a known type of multi-sensor camera (Weldy) to achieve predictable improvements in performance.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including claim 4 over Yamazaki and Mansoorian; claim 4 over Weldy, Denyer, Nagumo, and Mansoorian; and claim 5 over Weldy, Denyer, Nagumo, and Ikeda, which relied on similar combination rationales to add teachings of on-chip ADCs (Mansoorian) and dynamic range enhancement (Ikeda).

4. Key Claim Construction Positions

• "image sensor sensitive to [a/said] full region of visible color spectrum" (claims 1, 2, 3): Petitioner argued this term should be construed to mean an "image sensor that does not use any filter or uses a filter that does not obstruct any portion of the visible color spectrum." This construction was critical for mapping prior art sensors without color filters (like those in Yamazaki's Embodiment 1) onto the claims. Petitioner contended this was distinct from prior art mosaic filters (e.g., Bayer filters), which the ’289 patent specification disparaged.
• "image sensor sensitive to a selected range of said full region of visible color spectrum" (claim 3): Petitioner argued this term should mean an "image sensor with a single-color color filter, such that each pixel of the image sensor is responsive to a same selected range." This construction distinguished sensors capturing a specific color band (e.g., red) from both full-spectrum monochrome sensors and sensors with pixel-level mosaic filters.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was not warranted because the asserted grounds and prior art combinations had not been previously presented to or considered by the USPTO. While Nagumo was cited during prosecution, it was not applied to reject the challenged claims or in the combinations now proposed by Petitioner. Further, Petitioner argued that denial under §314(a) was inappropriate as the ’289 patent had not been challenged in any prior IPR petitions, making the General Plastic factors inapplicable.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-5 of the ’289 patent as unpatentable.