Apple Inc v. Corephotonics Ltd

1. Case Identification

• Case #: IPR2020-00487
• Patent #: 9,661,233
• Filed: February 28, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Corephotonics Ltd.
• Challenged Claims: 1-18

2. Patent Overview

• Title: Dual Aperture Zoom Digital Camera
• Brief Description: The ’233 patent discloses a dual-aperture digital camera with separate wide-angle and telephoto imaging sections, each having a fixed focal length lens. A camera controller is configured to provide continuous zoom video output by executing image registration to perform position matching when switching between the two imaging sections, thereby reducing a visible "jump effect."

3. Grounds for Unpatentability

Ground 1: Claims 1-4, 7, 10-13, and 16 are obvious over Golan in view of Martin.

• Prior Art Relied Upon: Golan (Application # 2012/0026366) and Martin (Patent 8,081,206).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Golan taught the foundational elements of the challenged claims, including a multiple-aperture digital camera with wide and telephoto imaging sections that switches between sensors to provide a continuous electronic zoom. However, Petitioner contended that the key limitation added during prosecution—"executing registration between the Wide and Tele images for performing position matching"—was expressly taught by Martin. Martin disclosed the "critical alignment" of two parallax images from different viewpoints to create a stable, continuous moving video image. Petitioner asserted that this "critical alignment" is a form of registration used for position matching to reduce discontinuities when switching between views.
  • Motivation to Combine: A POSITA would combine Golan and Martin because both references address the shared problem of providing a smooth video output when switching between different camera views. To improve upon Golan's static "electronic calibration," which may be insufficient to prevent all image jumps, a POSITA would have been motivated to incorporate Martin's dynamic registration technique. This combination would predictably achieve a more stable and seamless transition, a well-known goal in the field.
  • Expectation of Success: The combination involved applying a known image processing technique (Martin's registration) to a known dual-camera architecture (Golan's system) to achieve the predictable result of a smoother zoom transition.

Ground 2: Claims 5-6 and 14-15 are obvious over Golan in view of Martin and Ahiska.

• Prior Art Relied Upon: Golan (Application # 2012/0026366), Martin (Patent 8,081,206), and Ahiska (Patent 7,990,422).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the Golan and Martin combination to address claims requiring the matching of brightness (claim 5) and color (claim 6) between the wide and tele images during switching. Petitioner asserted that Ahiska explicitly taught matching these exact image properties to "transition between the master view and the slave view as seamlessly as possible to create the quality of a continuous zoom function." Ahiska disclosed techniques such as equalizing color histograms to match brightness and remove color offsets.
  • Motivation to Combine: A POSITA, having already addressed positional jumps by combining Golan and Martin, would recognize that discontinuities in brightness and color also disrupt the user experience. To create a truly seamless zoom, a POSITA would be motivated to incorporate Ahiska's well-known techniques for matching these image characteristics. This was presented as an obvious design choice to further refine the system's performance.

• Additional Grounds: Petitioner asserted additional obviousness challenges for claims 8, 9, 17, and 18 based on further adding Levey (Application # 2012/0019704, for user-selectable camera modes) and Parulski (Patent 7,859,588, for using a secondary camera for scene analysis) to the primary Golan and Martin combination.

4. Key Claim Construction Positions

• Petitioner argued for a specific construction of the phrase "reduce an image jump effect seen in video output images" (recited in claims 1 and 10).
• Based on the patent’s own specification, which defined a "jump" as a "discontinuous image change," Petitioner proposed that the phrase should be construed to mean "reduce a discontinuous image change in video output images." This construction was critical to Petitioner's arguments, as it framed the problem in a way that was directly addressed by prior art teaching methods to achieve stable, smooth, or continuous transitions between images.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate by analyzing the Becton-Dickinson factors.
• The core of the argument was that the petition presented new grounds and evidence not previously before the USPTO. Specifically, Martin—the key reference for teaching dynamic registration for position matching—was never considered by the Examiner during prosecution. Petitioner contended that the combination of Golan and Martin overcame the specific arguments the patent owner made during prosecution to secure allowance of the claims. Furthermore, the ancillary references (Ahiska, Levey, and Parulski) were also new to the record, further weighing in favor of institution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-18 of the ’233 patent as unpatentable under 35 U.S.C. §103.