Case: 20-1425
`
`Document:61
`
`Page:1_
`
`Filed: 05/20/2021
`
`NOTE: This disposition is nonprecedential.
`
`Anited States Court of Appeals
`for the federal Circuit
`
`COREPHOTONICS, LTD.,
`Appellant
`
`Vv.
`
`APPLEINC.,
`Appellee
`
`ANDREW HIRSHFELD, PERFORMING THE
`FUNCTIONS AND DUTIES OF THE UNDER
`SECRETARY OF COMMERCE FOR
`INTELLECTUAL PROPERTY AND DIRECTOR OF
`THE UNITED STATES PATENT AND TRADEMARK
`OFFICE,
`Intervenor
`
`2020-1425
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2018-
`01133.
`
`Decided: May 20, 2021
`
`ROBERT J. GAJARSA, Russ August & Kabat, Washing-
`ton, DC, argued for appellant. Also represented by MARC
`
`
`
`Document:61
`
`Page:1_
`
`Filed: 05/20/2021
`
`NOTE: This disposition is nonprecedential.
`
`Anited States Court of Appeals
`for the federal Circuit
`
`COREPHOTONICS, LTD.,
`Appellant
`
`Vv.
`
`APPLEINC.,
`Appellee
`
`ANDREW HIRSHFELD, PERFORMING THE
`FUNCTIONS AND DUTIES OF THE UNDER
`SECRETARY OF COMMERCE FOR
`INTELLECTUAL PROPERTY AND DIRECTOR OF
`THE UNITED STATES PATENT AND TRADEMARK
`OFFICE,
`Intervenor
`
`2020-1425
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2018-
`01133.
`
`Decided: May 20, 2021
`
`ROBERT J. GAJARSA, Russ August & Kabat, Washing-
`ton, DC, argued for appellant. Also represented by MARC
`
`
`
`
`
`Case: 20-1425 Page:2_Filed: 05/20/2021Document:61
`
`
`
`2
`
`COREPHOTONICS, LTD. v. APPLE INC.
`
`AARON FENSTER, NEIL RUBIN, Los Angeles, CA.
`
`ANGELA OLIVER, Haynes & Boone, LLP, Washington,
`DC, argued for appellee. Also represented by ANDREWS.
`EHMKE, DEBRA JANECE MCCOMAS, Dallas, TX; DAVID W.
`O'BRIEN, HONG SHI, Austin, TX.
`
`MAUREEN DONOVAN QUELER, Office of the Solicitor,
`United States Patent and Trademark Office, Alexandria,
`VA,
`for intervenor. Also represented by MICHAEL S.
`FORMAN, THOMAS W. KRAUSE,
`FARHEENA YASMEEN
`RASHEED.
`
`Before NEWMAN, REYNA, and TARANTO, Circuit Judges.
`
`REYNA, Circuit Judge.
`
`Corephotonics, Ltd. appeals a final written decision of
`the Patent Trial and Appeal Board in an inter partes re-
`view brought by Apple Inc. Corephotonics argues that the
`Board issued its decision in violation of the Appointments
`Clause because the Board’s decision cameafter this court’s
`decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d
`1320, 1335 (Fed. Cir. 2019) but before this court issued its
`mandate. On this basis, Corephotonics argues that the
`Board’s decision should be vacated and remanded. On the
`merits, Corephotonics argues that substantial evidence
`does not support the Board’s findings as to patentability.
`Because we determine that the Board issued its decision
`after this court’s decision in Arthrex we decline to vacate
`and remand the Board’s decision underlying this appeal.
`Moreover, because substantial evidence supports the
`Board’s patentability determination, weaffirm.
`
`BACKGROUND
`
`On May 22, 2018, Apple Inc. (“Apple”) filed a petition
`for inter partes review at the Patent Trial and Appeal
`Board (“Board”), asserting that claims 1—4 of U.S. Patent
`
`
`
`Case: 20-1425
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`Document:61
`
`Page:3_
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`Filed: 05/20/2021
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`COREPHOTONICS, LTD. v. APPLE INC.
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`3
`
`No. 9,538,152 (the “152 patent”) would have been obvious
`over U.S. Patent Publication No. 2008/0030592 to Border
`et al. (“Border”) in view of U.S. Patent No. 7,859,588 to Pa-
`rulski et al. (“Parulski’). J.A. 102.
`
`The ’152 patent is directed to a “multi-aperture imag-
`ing system comprising a first camera with a first sensor
`that captures a first image and a second camerawitha sec-
`ond sensor that captures a second image.” ’152 patent, Ab-
`stract. The ’152 patent discloses a dual-aperture camera
`used to capture synchronous images from both a wide-an-
`gle lens and a miniature telephoto lens with higherresolu-
`tion in a narrowerfield. Jd., col. 2, ll. 30—43; see also id.col.
`2 1. 64-col. 31.10. A “different magnification imageof the
`same sceneis grabbed by each subset, resulting in field of
`view (FOV) overlap between the two subsets.” ’152 patent
`at col. 3 ll. 11-14. The wide-angle and telephoto images
`are then fused to output one combined image. Jd. at col. 3
`ll. 11-24.
`
`The claims of the 7152 patent require a processor con-
`figured to “register the overlap area” of a “second image as
`non-primary image” to a “first image as primary imageto
`obtain the output image,” where the output image must be
`from either the “point of view of the first camera” or the
`“point of the view of the second camera.” Jd. at col. 13 Il.
`5-17. The image registration enables the “output image
`point of view” to be “determined according to the primary
`image point of view (camera angle).” Id. at col. 9 ll. 26-29.
`As a result of this imageregistration process, “the point of
`view of the output imageis that of the first camera,”if the
`field of view, or FOV,of the second camera(2) is less than
`the FOV of the first camera (1) based on a zoom factor (ZF)
`input, or if FOV2<FOVzr<FOVi.
`Jd. at col. 13 ll. 8—-11.1
`
`The patent further explains how thefirst or second
`1
`image becomethe primary imageasfollows: the “choice of
`the Wide image or the Tele image as the primary and
`
`
`
`
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`4
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`COREPHOTONICS, LTD. v. APPLE INC.
`
`Specifically, the representative asserted claims of the ’152
`patent recite:
`
`1. A multi-aperture imaging system comprising:
`
`a) a first camera that provides a first image, the
`first camera havinga first field of view (FOVi) and
`a first sensor with a first plurality of sensor pixels
`covered at least in part with a standard colorfilter
`array (CFA);
`
`b) a second camera that provides a second image,
`the second camera having a second field of view
`(FOV2) such that FOV2<FOV; and a second sensor
`with a second plurality of sensor pixels, the second
`plurality of sensor pixels being either Clearor cov-
`ered with a standard CFA, the second image hav-
`ing an overlap area with the first image; and
`
`c) a processor configured to provide an output im-
`age from a pointof view of the first camera based
`on a zoom factor (ZF) input that defines a respec-
`tive field of view (FOVzr), the first image being a
`primary image andthe second imagebeing a non-
`primary image, wherein if FOV2<FOVzr<FOV:i
`then the point of view of the output imageis
`that of the first camera, the processor further
`configured to register the overlap area of the
`
`auxiliary images is based on the ZF chosen for the output
`image.
`If the chosen ZF is larger than the ratio between
`the focal-lengths of the Tele and Wide cameras, the Tele
`image is set to be the primary image and the Wide image
`is set to be the auxiliary image. Ifthe chosen ZF is smaller
`than or equal to the ratio between the focal-lengths of the
`Tele and Wide cameras, the Wide imageis set to be the
`primary imageandthe Tele imageis set to be the auxiliary
`image.” °152 patentcol. 9 Il. 33—40.
`
`
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`Case: 20-1425
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`Document:61
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`Page:5_
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`COREPHOTONICS, LTD. v. APPLE INC.
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`5
`
`second image as non-primary imageto thefirst im-
`age as primary imageto obtain the output image.
`
`2. The multi-aperture imaging system of claim 1,
`wherein, if FOV2 2 FOVzr, then the processor is
`further configured to provide an output image from
`a point of view of the second camera.
`
`152 patent col. 12 1. 59-col. 13 1. 17 (emphasis added).2
`
`The Board issued its final written decision on Decem-
`ber 2, 2019, concluding that all challenged claims are un-
`patentable as obvious.
`J.A. 1-33; see also Apple Inc. v.
`Corephotonics Lid.,
`IPR2018-01133, 2019 WL6523190
`(P.T.A.B. Dec. 2, 2019). Of particular importance to the
`merits of this appeal, the Board found that the Borderref-
`erence disclosed the limitation “the point of view of the out-
`put imageis that of the first camera” appearing in claim 1.
`J.A. 24,
`
`Corephotonics appeals. This court has jurisdiction pur-
`suant to 28 U.S.C. § 1295(a)(4)(A).
`
`DISCUSSION
`
`This court reviews the Board’s factual determinations
`for substantial evidence and its legal determinations de
`novo.
`In re Stepan Co., 868 F.3d 1342, 13845 (Fed. Cir.
`2017). Obviousness is a question of law based on subsidi-
`ary findingsof fact. Id.
`
`I
`
`Before reaching the merits, we address Corephotonics,
`Ltd.’s (““Corephotonics”) initial argument. Corephotonics
`argues that the Board’s decision was issuedin violation of
`the Appointments Clause because the Board issued its
`
`Claims 3 and 4 parallel the limitations of claims 1
`2
`and 2, but are method claims rather than system claims.
`152 patent col. 13 1. 18—-col. 14 1. 22.
`
`
`
`
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`6
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`COREPHOTONICS, LTD. v. APPLE INC.
`
`final written decision on December 2, 2019, which wasaf-
`ter this court’s decision in Arthrex, but before the associ-
`ated mandate was issued.
`Specifically, Corephotonics
`contends that only the mandate in Arthrex would haveor-
`dered compliance by the agencyto this court’s opinion in
`Arthrex.
`
`In Caterpillar, this court determinedthatfinal written
`decisions issued by the Board after the Arthrex decision do
`not require a remandbecausetheydo not implicate the Ap-
`pointments Clause issues raised in Arthrex. See Caterpil-
`lar Paving Prods. Inc. v. Wirtgen Am., Inc., 957 F.3d 1342,
`13438 (Fed. Cir. 2020) (denying a motion to vacate and re-
`mandbased on Arthrex where the Board’s decision issued
`in November 2019,after the opinion in Arthrex). While the
`appellant in Caterpillar may not have raised the specific
`argument regarding the mandate implication that Core-
`photonics raises here, we see no reason to depart from our
`holding in Caterpillar for purposes of resolving this appeal.
`Accordingly, we decline to vacate the Board’s decision and
`remandto the Board.
`
`II
`
`As to the merits of its appeal, Corephotonics argues
`that substantial evidence does not support the Board’s
`finding because Border doesnot teach providing “an output
`image from a point of view of the first camera,” as required
`by the claims. *152 patent col. 13 ll. 5-6. Instead, Corepho-
`tonics contends that Border teaches stitching two images
`together to provide a composite image with portions from
`the point of view of the first camera andotherportions from
`the point of view of the second camera. Appellant’s Br. 1—
`2, 13. In other words, Border’s teaching produces a compo-
`site image with parts having two different points of view,
`not an image with the “point of view of the first camera.”
`Id.
`
`The Board concluded that Border’s express disclosure
`of transforming coordinates from the telephoto to the wide-
`
`
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`Case: 20-1425
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`Document:61
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`Page:7
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`Filed: 05/20/2021
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`COREPHOTONICS, LTD. v. APPLE INC.
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`7
`
`angle image, along with the testimony of Apple’s expert,
`Dr. Oliver Cossairt, is sufficient to meet the limitation.
`J.A. 24. We agree. Specifically, Border states that it
`“transforms the coordinates of the telephoto image 206 to
`the wide image 204.” Border at § 38 (J.A. 694).
`In addi-
`tion, Dr. Cossairt testified that transforming the coordi-
`nates hasthe effect of making the telephoto portion of the
`composite image have the same point of view as the wide
`image. J.A. 19; see also J.A. 651-52 (Declaration of Dr. Ol-
`iver Cossairt). Notably, Corephotonics’s expert did not,
`and could not, testify to the contrary as he stated that he
`wasnot an expert on this particular topic. J.A. 19; see also
`J.A. 1553-54 (Declaration of Dr. James Koshmach). Ac-
`cordingly, because substantial evidence supports the
`Board’s determination, we affirm. The court has consid-
`ered the remainder of Corephotonic’s arguments and finds
`them unpersuasive.
`
`CONCLUSION
`
`The court declines to vacate and remand the Board’s
`decision in view of Arthrex, because the final written deci-
`sion underlying this appeal issued after this court issued
`its decision in Arthrex.
`In addition, substantial evidence
`supports the Board’s well-reasoned decision, and thus the
`court affirms the Board’s unpatentability findings as to
`claims 1—4 of the ’152 patent.
`
`AFFIRMED
`
`
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