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 multiple aperture zoom digital camera system. The system includes two imaging sections, one with a wide-angle lens and one with a telephoto lens, each with its own image sensor. A camera controller provides continuous zoom video by executing registration between the images from the two sections to perform position matching when switching between them, thereby reducing visual discontinuities.

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 disclosed a dual-aperture digital camera with wide and telephoto lenses (a "Wide" and "Tele" imaging section) and a controller to provide "continuous electronic zoom" by switching between the sensors. However, Golan's method of using a fixed "electronic calibration" was insufficient to prevent image jumps. Petitioner asserted that Martin supplied the missing element by teaching the "critical alignment" of parallax images from different viewpoints to create a stable, continuous moving image. This "critical alignment" is argued to be the "executing registration for performing position matching" recited in the claims.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Golan and Martin as they address the same problem in the same field: generating continuous video from multiple cameras. A POSITA implementing Golan's system would be motivated to incorporate Martin's "critical alignment" method to achieve Golan's stated goal of "uninterrupted imaging" and produce a genuinely seamless and stable transition between the wide and telephoto views.
  • Expectation of Success: The combination was presented as a predictable integration of known elements, applying Martin's image alignment solution to Golan's dual-camera hardware to achieve the expected benefit of a smooth zoom.

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 builds on the Golan and Martin combination by adding Ahiska to address claims requiring matching brightness (claim 5) and color (claim 6) between the images. Petitioner contended that Ahiska taught techniques to "transition between the master view and the slave view as seamlessly as possible," which included matching image properties like brightness, exposure levels, and color between the views.
  • Motivation to Combine: A POSITA seeking to create a high-quality, continuous zoom function as described in Golan would recognize that a seamless transition requires matching not only image position (taught by Martin) but also photometric properties. Ahiska provided a known method for matching brightness and color, making it an obvious addition to improve the final video output.

Ground 3: Claims 8 and 17 are obvious over Golan in view of Martin and Levey.

• Prior Art Relied Upon: Golan (Application # 2012/0026366), Martin (Patent 8,081,206), and Levey (Application # 2012/0019704).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground adds Levey to address claims 8 and 17, which recite a "user control module for receiving user inputs" that include a "camera mode." Petitioner argued Levey disclosed a digital camera with a user interface for selecting from a plurality of photography modes (e.g., still, video, review), where each mode had associated image capture and processing settings.
  • Motivation to Combine: A POSITA would be motivated to incorporate Levey's user-selectable modes into the Golan/Martin camera system. Providing users with different modes is a conventional and desirable feature in digital cameras, and its implementation would have been a predictable design choice to enhance functionality.

Ground 4: Claims 9 and 18 are obvious over Golan in view of Martin and Parulski.

• Prior Art Relied Upon: Golan (Application # 2012/0026366), Martin (Patent 8,081,206), and Parulski (Patent 7,859,588).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground adds Parulski to address claims 9 and 18, which require using "secondary information" from the non-primary imaging section to configure the primary imaging section during a zoom. Petitioner asserted that Parulski taught a dual-lens camera system where one imaging stage is the "primary capture unit" and the other is a "scene analysis capture unit." Parulski disclosed using scene analysis data (e.g., exposure, color balance) from the secondary unit to set the parameters for the primary unit, which directly maps to the claim limitations.
  • Motivation to Combine: To achieve the best possible image quality throughout a zoom transition, a POSITA would be motivated to use all available sensor data. Parulski provided a known method for using the inactive camera to provide valuable scene information to the active camera, representing an obvious technique to improve the imaging capability of the Golan/Martin system.

4. Key Claim Construction Positions

• Petitioner proposed a construction for the phrase "reduce an image jump effect seen in video output images" (claims 1 and 10).
• It was argued this phrase should be construed to mean "reduce a discontinuous image change in video output images." This construction was based on the ’233 patent’s own specification, which explicitly defined a "jump" as a "discontinuous" image change and contrasted it with a "smooth transition" that "minimizes the jump effect." This construction was critical to mapping prior art that taught creating stable or continuous video transitions onto the claim language.

5. Key Technical Contentions (Beyond Claim Construction)

• A central technical premise of the petition was the distinction between static calibration and dynamic registration. Petitioner argued that a one-time, fixed "electronic calibration" between two cameras (as taught by Golan) is insufficient to ensure a seamless video transition in real-world use, as factors like shock, vibration, and thermal variation can alter the alignment. Therefore, a dynamic, frame-by-frame "registration" (as taught by Martin) is necessary to accurately match the images at the moment of switching, which was a well-known concept to a POSITA.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was not warranted, primarily based on the Becton-Dickinson factors.
• The core argument was that the primary prior art combination (Golan and Martin) presented new evidence and arguments not previously before the Examiner. While the Examiner considered Golan, the Applicant overcame that rejection by adding the "executing registration" limitation and arguing Golan lacked this teaching. Petitioner asserted that Martin, which was never considered during prosecution, directly teaches this missing registration element. Therefore, the petition raised a new question of patentability based on a materially different combination of art that cured the deficiency of the prior art previously of record.

7. Relief Requested

• Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 1-18 of the ’233 patent as unpatentable.