Apple Inc v. Corephotonics Ltd

1. Case Identification

• Case #: IPR2020-00860
• Patent #: 10,326,942
• Filed: May 1, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Corephotonics Ltd.
• Challenged Claims: 1-25

2. Patent Overview

• Title: Dual Aperture Zoom Digital Camera
• Brief Description: The ’942 patent discloses a multiple-aperture zoom digital camera featuring both a Wide and a Telephoto imaging section. A central element is a camera controller designed to reduce the "image jump effect" during video recording when switching between the two sections by shifting one image relative to the other based on the distance of an object within a specific region of interest.

3. Grounds for Unpatentability

Ground 1: Obviousness over Golan and Martin - Claims 1-2, 4, 19-20, and 22 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 dual-aperture camera system with Wide and Tele sensors, designed to provide a "continuous electronic zoom" by switching between the sensors. However, Golan's method of using a fixed electronic calibration was insufficient to prevent image jump caused by parallax effects at different object distances. Martin addressed this exact problem by teaching the "critical alignment" of two parallax images from different viewpoints to create a stable, continuous moving image for autostereoscopic displays. Martin explicitly taught shifting a succeeding image relative to a preceding image based on a region of interest to achieve this stability.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Martin’s dynamic, registration-based alignment technique with Golan’s dual-camera system to solve the known problem of image jump when switching between cameras. The references are analogous art, both addressing the generation of continuous video from multiple imaging sources. A POSITA would have sought to improve Golan's fixed calibration with Martin's more robust, object-distance-dependent alignment to produce the predictable result of a smoother zoom transition.
  • Expectation of Success: A POSITA would have had a high expectation of success, as applying known image registration and shifting techniques (as taught by Martin) to a multi-camera system (like Golan's) was a well-understood method to correct for parallax and stabilize video output.

Ground 2: Obviousness over Golan, Martin, and Ahiska - Claims 3 and 21 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 combination of Golan and Martin by adding the teachings of Ahiska. Ahiska disclosed methods to make the transition between a master and slave camera view "as seamlessly as possible" by matching image properties, specifically including brightness, exposure levels, and color, between the two views. The claims challenged under this ground require matching brightness and color between the Wide and Tele images.
  • Motivation to Combine: A POSITA, having already combined Golan and Martin to address positional image jump, would be further motivated to incorporate Ahiska's teachings to address other visual discontinuities. Matching brightness and color is a well-known and logical next step to further enhance the seamlessness of the video transition, producing a more aesthetically pleasing and less jarring user experience.
  • Expectation of Success: Combining these known techniques—positional alignment and color/brightness matching—was a straightforward and predictable approach to improving video quality in a dual-camera system.

Ground 3: Obviousness over Golan, Martin, and Parulski - Claims 6-8 and 24-25 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 the base combination to address claims requiring the use of "secondary information" from the non-primary imaging section to reduce discontinuities during a switch. Parulski taught a dual-lens camera that, when switching zoom levels, uses scene analysis data (e.g., exposure data, color balance) from the non-primary capture unit to set the capture parameters of the primary unit. This pre-conditions the newly activated camera to maintain consistent image characteristics.
  • Motivation to Combine: A POSITA would be motivated to apply Parulski's technique to the Golan/Martin system to further reduce discontinuities. By using information from the soon-to-be-deactivated camera (e.g., the Wide lens) to prepare the soon-to-be-activated camera (e.g., the Tele lens), the system could achieve a more seamless transition in terms of image properties beyond just position, improving overall video quality.
  • Expectation of Success: This was a known engineering choice for improving transitions, and its application to the combined Golan/Martin system would have yielded the predictable benefit of reduced visual artifacts.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Levey (for user-selectable camera modes), Soga (for creating shallow depth-of-field effects), Baer (for synchronizing rolling shutters), and Stein (for synchronizing sensors to capture overlapping FOVs simultaneously).

4. Key Claim Construction Positions

• Petitioner argued for a specific construction of the term "reduce [an/the] image jump effect seen in video output images," proposing it be construed to mean "reduce a discontinuous image change in video output images."
• This construction was based on explicit definitions within the ’942 patent's own specification, which distinguished a "jump" (a discontinuous change) from a "continuous change." This construction was central to Petitioner's argument that prior art methods for achieving "stable" or "continuous" transitions met this claim limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate based on the Becton-Dickinson factors.
• The core argument was that the petition presented new evidence and grounds not previously before the Examiner. Specifically, the Martin patent, which formed the cornerstone of the primary obviousness argument for correcting parallax-induced image jump, was never considered during the prosecution of the ’942 patent or its parent application. Petitioner contended this new art was not cumulative and addressed deficiencies in the rejections made during the prosecution of the parent ’233 patent.

6. Relief Requested

• Petitioner requests institution of inter partes review of claims 1-25 and cancellation of those claims as unpatentable.