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 Digital Camera
• Brief Description: The ’479 patent discloses a dual-aperture digital camera system featuring both a wide-angle and a telephoto camera with overlapping fields of view. The system uses a camera controller to process images from both lenses to calculate depth information and to create a fused composite image with a shallow depth of field, specifically designed for "portrait photos."

3. Grounds for Unpatentability

Ground 1: Claims 19-20 are obvious over the combination of 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 asserted that Parulski taught the foundational dual-lens camera system with fixed wide and telephoto lenses, overlapping fields of view, and a controller for processing images. Parulski disclosed calculating depth maps by finding pixel offsets between the two images and performing a general image enhancement by fusing the images. Petitioner argued a person of ordinary skill in the art (POSITA) would implement Parulski's conceptual system using well-known, high-performance lens designs like Ogata for the wide-angle lens and Kawamura for the telephoto lens, which, when scaled for modern sensors, meet the specific optical requirements of claim 19 (e.g., F-numbers, narrower field of view for the telephoto, and an EFL/TTL ratio > 1). To meet the limitation of creating a "fused image suited for portrait photos," Petitioner relied on Soga, which taught a specific fusion technique to create an aesthetic "bokeh" effect by combining a focused telephoto image of a subject with a blurred background from a wide-angle image.
  • Motivation to Combine: A POSITA would combine Parulski with Ogata and Kawamura because Parulski described a system conceptually but lacked specific lens prescriptions, making the use of known, high-quality lens designs a logical implementation step. A POSITA would further incorporate Soga's teachings because it provided a specific, desirable method for creating portrait-style images with blurred backgrounds—a goal aligned with Parulski's general "image enhancement" but more specific and aesthetically refined. The combination would predictably yield an improved portrait photography capability.
  • Expectation of Success: Success was expected because the combination involved implementing a known camera architecture (Parulski) with standard, high-quality lens designs (Ogata, Kawamura) and applying a known image fusion technique (Soga) for its intended and described purpose.

Ground 2: Claims 21-22 are obvious over the combination of Parulski, Ogata, Kawamura, Soga, and Morgan-Mar.

• Prior Art Relied Upon: Parulski (Patent 7,859,588), Ogata (Patent 5,546,236), Kawamura (JPS5862609A), Soga (JP Application # 2007-259108), and Morgan-Mar (Patent 8,989,517).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1, adding Morgan-Mar to address the limitations of dependent claims 21 and 22. The combination of Parulski and Soga taught creating a portrait photo with a shallow depth-of-field "bokeh" effect. Morgan-Mar was cited for its explicit teaching of "Bokeh Amplification" to make a compact camera's output mimic the aesthetic blur of a high-end digital single-lens reflex (DSLR) camera. Morgan-Mar specifically taught that this technique could produce portrait photos similar to those from a DSLR (addressing claim 21) and that an appropriate DSLR for such portraits would have a focal length in the 50-80mm range (addressing claim 22).
  • Motivation to Combine: The system from Ground 1 was designed to create aesthetic portraits. A POSITA would be motivated to incorporate the teachings of Morgan-Mar, which operated in the same field, to enhance the system's output to meet a known industry benchmark for quality: the look of a DSLR camera. This would be a predictable improvement to achieve a more marketable and visually pleasing result.
  • Expectation of Success: Combining Morgan-Mar's teachings on achieving a DSLR aesthetic with a system already designed to produce aesthetic blur (the Parulski/Soga combination) represented a straightforward application of known techniques to achieve a predictable and beneficial outcome.

4. Key Claim Construction Positions

• Petitioner argued that 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" should be construed as requiring the camera controller to perform two separate and independent functions. This construction was central to the invalidity argument, as Petitioner mapped the "depth calculation" function primarily to Parulski and the "create a fused image for portrait photos" function primarily to Soga, treating them as distinct teachings a POSITA would combine.

5. Key Technical Contentions (Beyond Claim Construction)

• A core technical premise of the petition was that a POSITA would find it routine and obvious to scale older lens prescriptions for modern sensors. Petitioner argued that the lens designs in Ogata (1996) and Kawamura (1983), originally for film or larger sensors, could be predictably scaled down for the compact 1/2.5" sensors used in modern devices (as described in Parulski) using standard optical design software, while maintaining their key performance characteristics.

6. Arguments Regarding Discretionary Denial

• Petitioner contended that discretionary denial under 35 U.S.C. §314(a) or §325(d) was not warranted. The core reason provided was that none of the asserted prior art references or their specific combinations were considered by the Examiner during the original prosecution. Therefore, the petition raised novel patentability issues that had not been previously addressed by the USPTO.

7. Relief Requested

• Petitioner requested that the Board institute an inter partes review of claims 19-22 of the ’479 patent and cancel each of those claims as unpatentable under 35 U.S.C. §103.