Apple Inc v. Corephotonics Ltd

1. Case Identification

• Case #: IPR2020-00906
• Patent #: 10,225,479
• Filed: May 6, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Corephotonics Ltd.
• Challenged Claims: 19-22

2. Patent Overview

• Title: Dual-Aperture Zoom Digital Camera
• Brief Description: The ’479 patent discloses a dual-aperture digital camera featuring both a wide-angle and a telephoto imaging system. The core technology involves a camera controller that processes images from both systems to calculate depth information and to create a fused "portrait photo" with a shallow depth of field and an artificially blurred background.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 19-20 over Parulski, Ogata, Kawamura, and Soga

• Prior Art Relied Upon: Parulski (Patent 7,859,588), Ogata (Patent 5,546,236), Kawamura (JPS5862609A), and Soga (JP Application # 2007-259108).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Parulski taught the foundational dual-aperture camera system capable of using two images to create a depth map and a fused, enhanced image. However, Parulski lacked specific lens prescriptions. Petitioner asserted that Ogata provided a well-known wide-angle lens design and Kawamura provided a telephoto lens design that, when scaled for modern sensors, would be suitable for implementing Parulski’s system and would meet the claimed telephoto lens characteristic (EFL/TTL > 1). Finally, Soga was alleged to teach the claimed method of creating a fused image suited for portrait photos by combining a telephoto image focused on a subject with a wider-angle image focused at a different distance, thereby creating an aesthetically pleasing blurred background (bokeh effect).
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) building the system described in Parulski would combine it with established lens designs like those in Ogata and Kawamura to create a functional device. A POSITA would further incorporate Soga’s image-fusion technique to achieve the well-known and desirable goal of producing portrait photos with a shallow depth of field, as this was a common objective in the field of digital photography.
  • Expectation of Success: The combination involved applying known lens designs to a camera system and using a known image processing technique to achieve a predictable aesthetic result. Petitioner contended this would have been a straightforward integration for a POSITA.

Ground 2: Obviousness of Claims 21-22 over Parulski, Ogata, Kawamura, Soga, and Morgan-Mar

• Prior Art Relied Upon: The combination from Ground 1, plus Morgan-Mar (Patent 8,989,517).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1 to address the additional limitations in claims 21 and 22. Petitioner asserted that Morgan-Mar taught methods for producing "artificial bokeh" in compact cameras specifically to mimic the visual characteristics of a high-end digital single-lens reflex (DSLR) camera, thereby meeting the limitation of claim 21 that the output is "similar to a portrait photo taken with a...DSLR camera." Furthermore, Morgan-Mar explicitly taught that a typical focal length for DSLR portrait photography is within the 50-80 mm range, directly mapping to the limitation recited in claim 22.
  • Motivation to Combine: A POSITA seeking to enhance the portrait mode capabilities of the camera system from Ground 1 would be motivated to consult references like Morgan-Mar, which explicitly address the goal of emulating DSLR image quality in compact cameras. The motivation was to improve the aesthetic quality of the output image to meet consumer expectations for portrait photography.
  • Expectation of Success: Applying Morgan-Mar's teachings on DSLR emulation to the image fusion process of the primary combination was argued to be a predictable design choice that would have yielded the claimed results without undue experimentation.

4. Key Claim Construction Positions

• Petitioner argued for a specific construction of the claim 19 term: "to find translations between matching points in the images to calculate depth information and to create a fused image suited for portrait photos."
• Petitioner asserted this phrase requires the camera controller to perform two separate and independent functions: (1) a depth calculation function based on finding translations between points, and (2) an image fusion function to create the final portrait photo. This construction was central to Petitioner's strategy of mapping Parulski primarily to the first function and the teachings of Soga to the second.

5. Key Technical Contentions (Beyond Claim Construction)

• A central technical argument was the routine scalability of prior art lens designs. Petitioner contended that a POSITA would have found it obvious and routine to take the lens prescriptions from older references like Ogata and Kawamura, originally designed for 35mm film, and scale them down for use with the smaller digital image sensors common in modern compact cameras. This was presented as a predictable step using standard optical design tools (e.g., Zemax software) to implement the wide and telephoto lens systems required by the asserted claims.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) or §325(d) was unwarranted. The core reason provided was that none of the prior art references asserted in the petition were cited or substantively considered by the Examiner during the original prosecution of the ’479 patent. Therefore, the petition raised novel grounds of unpatentability that had not been previously evaluated by the USPTO.

7. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 19-22 of the ’479 patent as unpatentable.