Apple Inc v. ImmerVision Inc

1. Case Identification

• Case #: IPR2023-00471
• Patent #: 6,844,990
• Filed: January 18, 2023
• Petitioner(s): Apple, Inc.
• Challenged Claims: 2, 4, 27, 29, and 30

2. Patent Overview

• Title: Method for Capturing and Displaying a Variable Resolution Digital Panoramic Image
• Brief Description: The ’990 patent discloses methods for capturing and displaying panoramic images using a panoramic objective lens. The lens has a non-linear image point distribution function, which creates an image with at least one substantially expanded zone and at least one substantially compressed zone to vary the resolution across the captured image.

3. Grounds for Unpatentability

Ground 1: Obviousness over Baker and Shiota - Claims 2, 4, 27, and 29 are obvious over Baker in view of Shiota.

• Prior Art Relied Upon: Baker (Patent 5,686,957) and Shiota (EP 1028389 A2).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Baker disclosed a video conferencing system that used a panoramic objective lens to capture a hemispheric scene. Baker’s lens was designed to enhance the resolution of the peripheral portions of the image (e.g., where conference participants are seated) while minimizing the central area. This process resulted in a "warped" image with non-linear distribution, containing expanded and compressed zones. Baker further disclosed a "transform processor" to correct this distortion and display a perspective-correct image. While Baker taught the need for correction, Petitioner asserted it did not specify the correction method. Shiota, in turn, disclosed a method for transforming a distorted image from a fisheye lens into a plane image for display by correcting its non-linearity. Shiota’s method involved using the lens's own non-linear distribution function to calculate a correction coefficient and retrieve corrected image points.
  • Motivation to Combine: A POSITA would combine Baker and Shiota to implement a specific, known correction technique for the distortion problem identified in Baker. Petitioner contended that a POSITA, seeking to implement Baker’s distortion correction, would have looked to known methods like Shiota’s, which used the lens's non-linear distribution function to de-warp the image. The Patent Owner had previously acknowledged that a POSITA would recognize the need to correct Baker's warped image and would consult Shiota for a method.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references because both addressed the same problem of correcting distortion in wide-angle images for display. Applying Shiota’s well-defined mathematical transformation to Baker’s captured image would predictably yield a corrected panoramic image.

Ground 2: Obviousness over Baker, Shiota, and Fisher - Claims 29 and 30 are obvious over Baker in view of Shiota and Fisher.

• Prior Art Relied Upon: Baker (Patent 5,686,957), Shiota (EP 1028389 A2), and Fisher (Patent 3,953,111).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Baker/Shiota combination by adding Fisher. Claim 29 required the objective lens to be an "apodizer," and claim 30 required the apodizer to comprise at least one "aspherical lens." Petitioner argued Baker's lens, which controlled the angular distribution of light to create non-linearity, met the patent’s definition of an apodizer. Baker achieved this using a hemispherical lens made of gradient index (GRIN) material. Fisher disclosed a fish-eye lens that achieved a similar non-linear effect (expanding the image center and compressing the periphery) using multiple aspherical lens elements.
  • Motivation to Combine: A POSITA would have been motivated to substitute the aspheric lens design of Fisher into the Baker system. Petitioner argued that, before the critical date, using GRIN elements (as in Baker) and using aspheric elements (as in Fisher) were two well-known and equivalent techniques for designing panoramic lenses to achieve a desired non-linear image distribution. A POSITA would have recognized aspheric lenses as a simple, predictable substitute for GRIN lenses to achieve the same goal of controlling angular distribution and image distortion.
  • Expectation of Success: A POSITA would have reasonably expected success because substituting one known optical design element (aspheric lens) for an equivalent (GRIN lens) to perform the same function (create non-linear image distribution) was a standard practice in optical engineering that would yield predictable results.

4. Key Claim Construction Positions

• Petitioner applied claim constructions adopted in a prior IPR for the ’990 patent, including:
  • "panoramic objective lens": "a super-wide or ultra-wide objective lens"
  • "expanded zone": "the portion of the image point distribution function where the gradient is higher than the gradient of the linear distribution function"
  • "compressed zone": "the portion of the image point distribution function where the gradient is lower than the gradient of the linear distribution function"
  • "maximum divergence": "Defined by the formula DIVmax %=[[dr(Pd)-dr(Pdl)]/[dr(Pdl)]]*100..."

5. Arguments Regarding Discretionary Denial

• Fintiv Factors (§314(a)): Petitioner argued against discretionary denial under Fintiv, asserting that the parallel district court litigation was in an early stage, with claim construction yet to be briefed. A Final Written Decision (FWD) from the IPR would issue at least two months before the scheduled trial date, and a stay would likely be granted upon institution, promoting judicial efficiency.
• Same or Substantially the Same Art or Arguments (§325(d)): Petitioner contended that denial under §325(d) was improper. Although the prior art references were considered during a prior reexamination, Petitioner asserted it was presenting new arguments and analysis not previously considered by the USPTO. Specifically, Petitioner argued that the Patent Owner, during reexamination, had successfully steered the examiner away from key teachings in Shiota regarding the use of the image size in the correction algorithm. The petition presented a new, more thorough analysis of these teachings, which it argued would lead to a different conclusion on patentability.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 2, 4, 27, 29, and 30 of the ’990 patent as unpatentable.