Apple Inc v. Corephotonics Ltd

1. Case Identification

• Case #: IPR2020-00862
• Patent #: 10,356,332
• Filed: May 6, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Corephotonics Ltd.
• Challenged Claims: 1-2, 5, 9-14, 17, and 21-22

2. Patent Overview

• Title: Dual Aperture Zoom Camera with Video Support and Switching/Non-Switching Dynamic Control
• Brief Description: The ’332 patent discloses a multiple-aperture zoom digital camera featuring separate wide-angle (Wide) and telephoto (Tele) imaging sections, each with its own lens and sensor. The patent describes a camera controller configured to output a zoom video image using data from only the Wide or only the Tele sensor, depending on whether a "no-switching criterion" is fulfilled, to prevent image quality degradation during zoom operations.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 5, 9, 13-14, and 17 are obvious over Golan in view of Martin and Togo.

• Prior Art Relied Upon: Golan (Application # 2012/0026366), Martin (Patent 8,081,206), and Togo (JP Application # 2011-55246).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Golan taught the foundational dual-aperture camera system with distinct Wide and Tele imaging sections and a controller for switching between them to achieve continuous electronic zoom. To meet the limitation of outputting a "transformed" Tele image, Petitioner relied on Martin, which taught using critical alignment and image registration to ensure a stable, seamless transition between images captured from different viewpoints. To meet the "no-switching criterion" limitation, Petitioner pointed to Togo, which disclosed overriding the switch from the Wide to the Tele lens if a certain criterion—such as the subject being too close—was met, thereby preventing the known issue of image quality degradation from telephoto lenses at short distances.
  • Motivation to Combine: A POSITA would combine Martin’s registration teachings with Golan’s system to solve the known problem of creating a stable video transition when switching between cameras. A POSITA would also integrate Togo's image-quality-based criterion into the Golan system to improve zoom performance by avoiding scenarios where the Tele lens would produce an inferior image, a well-understood challenge in camera design.
  • Expectation of Success: Success was predictable, as all three references operated in the same field of digital imaging, addressed common problems, and their combination involved applying known techniques to achieve expected improvements.

Ground 2: Claim 10 is obvious over Golan in view of Martin, Togo, and Levey.

• Prior Art Relied Upon: Golan (Application # 2012/0026366), Martin (Patent 8,081,206), Togo (JP Application # 2011-55246), and Levey (Application # 2012/0019704).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground incorporated the combination from Ground 1 and added Levey to address the limitations of claim 10, which required that user inputs include a "camera mode" and a "region of interest." Petitioner asserted that Levey taught a user interface allowing selection between various photography modes, each with associated image capture settings. Martin was cited for teaching user selection of a region of interest for image alignment.
  • Motivation to Combine: A POSITA would combine Levey's teachings to provide users with a plurality of selectable camera modes, a common and desirable feature for enhancing user control in digital cameras. Adding this known feature to the base camera system of Golan, Martin, and Togo was presented as a simple and predictable design choice.

Ground 3: Claims 12 and 21 are obvious over Golan in view of Martin, Togo, and Border.

• Prior Art Relied Upon: Golan (Application # 2012/0026366), Martin (Patent 8,081,206), Togo (JP Application # 2011-55246), and Border (Application # 2008/0030592).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added Border to the base combination to address claims 12 and 21, which required the controller to combine Wide and Tele image data in "still mode" to provide a "fused output image." Petitioner argued that Border explicitly taught combining images from wide and telephoto sensors in still mode to generate a single, high-resolution composite (fused) image.
  • Motivation to Combine: A POSITA would be motivated to apply Border’s technique for still image fusion to the camera system from Ground 1. This would allow for higher-quality still images by leveraging data from both sensors, while maintaining the distinct switching logic for video mode, thereby providing enhanced functionality for both modes of operation.

Ground 4: Claims 11 and 22 are obvious over Golan in view of Martin, Togo, and Parulski.

• Prior Art Relied Upon: Golan (Application # 2012/0026366), Martin (Patent 8,081,206), Togo (JP Application # 2011-55246), and Parulski (Patent 7,859,588).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added Parulski to address claim 11, which recited a Tele lens with a total track length to effective focal length (TTL/EFL) ratio smaller than 1, and claim 22, which recited combining image data "only in focused areas." Petitioner asserted that Parulski taught a dual-lens camera using a compact telephoto lens design that met the claimed TTL/EFL ratio. Parulski also taught combining only the sharp, in-focus portions from two separate images to generate a fused image with a broadened depth of field.
  • Motivation to Combine: A POSITA would combine Parulski's teachings for two predictable benefits: using a standard compact telephoto lens design to reduce device size, and applying a known focus-stacking technique to improve the depth of field and overall quality of fused still images.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was not warranted because the petition presented new prior art and arguments not previously before the examiner. Petitioner specifically identified Togo, Martin, and Levey as references not considered during prosecution. It further contended that while Golan, Border, and Parulski were cited in an Information Disclosure Statement, they were never substantively evaluated or applied in a rejection, as the ’332 patent issued from a first action allowance. Therefore, the Becton-Dickinson factors weighed in favor of institution.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-2, 5, 9-14, 17, and 21-22 of the ’332 patent as unpatentable.