Apple Inc v. Corephotonics Ltd

1. Case Identification

• Case #: IPR2020-00489
• Patent #: 10,015,408
• Filed: February 5, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Corephotonics Ltd.
• Challenged Claims: 5-6

2. Patent Overview

• Title: Dual Aperture Zoom Digital Camera
• Brief Description: The ’408 patent describes a digital camera with two distinct imaging sections: a wide-angle module and a telephoto module. Each section includes a fixed focal length lens and a dedicated image sensor. The invention is particularly directed to the optical design of the telephoto lens, which comprises five specific lens elements configured to achieve a compact physical size, specifically a low ratio of total track length (TTL) to effective focal length (EFL).

3. Grounds for Unpatentability

Ground 1: Claims 5-6 are obvious over Golan in view of Kawamura.

• Prior Art Relied Upon: Golan (Application # 2012/0026366) and Kawamura (JP Application # S58-62609).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Golan taught the foundational dual-camera system, while Kawamura provided the specific, high-performance telephoto lens design that a person of ordinary skill in the art (POSITA) would have been motivated to incorporate.
    • Claim 5 (System): Golan was asserted to teach a zoom digital camera with a first imaging section (wide lens 122, wide sensor 112) and a second imaging section (narrow lens 120, tele sensor 110). Both lenses have a "predesigned FOV," which Petitioner argued corresponds to the claimed "fixed focal length," and Golan explicitly states the second FOV is narrower than the first. This combination was argued to meet the preamble and limitations [5.1] and [5.2] of claim 5. Petitioner contended that Kawamura’s detailed telephoto lens design rendered the remaining limitations obvious. Kawamura’s five-element lens, starting with a positive element, and including a second negative element, a fourth negative element, and a fifth element, was mapped to limitation [5.3]. Kawamura’s design tables and figures were shown to disclose that the largest distance between consecutive elements is the distance between the fourth and fifth elements, meeting limitation [5.4]. Finally, Kawamura’s objective of achieving a compact lens with a “telephoto ratio of about 0.96 to 0.88” was argued to teach a TTL/EFL ratio smaller than 1, as required by limitation [5.5].
    • Claim 6 (Controller & Function): Golan’s “zoom control circuit 130” was identified as the claimed “camera controller,” which is operatively coupled to both imaging sections to select between them based on a user’s zoom request. Golan’s system provides “continuous electronic zoom with uninterrupted imaging” when switching between the wide (lower zoom factor) and tele (higher zoom factor) sensors. Petitioner argued this functionality met the claim 6 limitation of providing video output with a “smooth transition” when switching between zoom factors.
  • Motivation to Combine (for §103 grounds): Petitioner asserted that a POSITA would have been motivated to combine the references as they are in the same field and share the goal of creating a compact, lightweight, high-performance zoom imaging system. Golan described a dual-camera system architecture but did not disclose a specific lens prescription for its telephoto lens. Kawamura provided an exemplary compact, high-performance five-element telephoto lens design that directly addressed this need. A POSITA would have therefore looked to a reference like Kawamura to implement the telephoto lens in Golan’s system to achieve the shared goals of compactness and excellent image formation.
  • Expectation of Success (for §103 grounds): Petitioner argued that combining Kawamura’s lens design with Golan’s system would have produced predictable results. The integration was presented as a combination of known elements (a specific lens design within a known camera architecture) according to known methods. It was further argued that any necessary adjustments, such as scaling Kawamura’s lens prescription to fit the specific dimensions of Golan’s camera, were well within the ordinary skill in the art and would have been expected to succeed.

4. Key Claim Construction Positions

• "smooth transition" (claim 6): Petitioner proposed this term be construed to mean a “transition with a reduced discontinuous image change.” This construction was based on the patent’s specification, which explicitly defines a “jump” as a “discontinuous image change” and a “smooth transition” as a transition that “minimizes the jump effect.” Golan’s disclosure of “uninterrupted imaging” and “continuous electronic zoom” when switching between sensors was argued to meet this construction.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) or §325(d) was not warranted. The primary reasons asserted were that the prior art references, Golan and Kawamura, were not cited or considered during the original prosecution of the ’408 patent. Therefore, the petition presented new arguments and art that had not been previously evaluated by the USPTO.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 5 and 6 of the ’408 patent as unpatentable.