UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner
`____________
`
`Case IPR2018-01133
`U.S. Patent No. 9,538,152
`____________
`
`
`PATENT OWNER’S RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
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`

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`Table of Contents
`
`I.
`
`Introduction ........................................................................................................ 1
`
`II. Background......................................................................................................... 4
`
`A. Apple’s Petition............................................................................................... 4
`
`B. The ’152 Patent (Ex. 1001) ............................................................................. 4
`
`III. Claim Construction ........................................................................................... 10
`
`A. “standard color filter array (CFA)” ............................................................... 11
`
`B. “point of view” .............................................................................................. 13
`
`IV. Applicable Legal Standards .............................................................................. 17
`
`V. Argument .......................................................................................................... 19
`
`A. Border Fails to Disclose [1.10] where “FOV2<FOVZF<FOV1 then the point
`of view of the output image is that of the first camera” ....................................... 19
`
`B. Border Fails to Disclose [1.11]: a processor “configured to register the
`overlap area of the second image as non-primary image to the first image as
`primary image to obtain the output image” ......................................................... 27
`
`C. The Petition Fails to Explain Why or How a POSITA would Combine
`Border with Parulski’s Teaching of Modifying a Primary Image with a Non-
`Primary Image ...................................................................................................... 32
`
`D. Apple’s Expert Witness Conceded that Border Does Not Disclose An
`“Output Image from the Point of View of the Second Camera” where
`“FOV2≧FOVZF” .................................................................................................. 34
`
`VI. Conclusion ........................................................................................................ 36
`
`
`
`
`
`i
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`

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`Table of Authorities
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012)............................................................................ 16
`Apple Inc. v. Uniloc Luxembourg S.A.,
`IPR2018-00420, Paper 7 (PTAB, Aug. 6, 2018) ................................................. 10
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015)............................................................................ 16
`Cisco Systems, Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB, Aug. 29, 2014) ............................................. 17
`Edmund Optics, Inc. v. Semrock, Inc.,
`IPR2014-00583, Paper 50 (PTAB, Sep. 9, 2015) ................................................ 17
`Ex Parte Conti,
`Appeal No. 2016-001320 (PTAB Feb. 10, 2017) ................................................ 35
`Ex Parte Morichika,
`Appeal No. 2014-000220 (PTAB April 5, 2017) ................................................ 34
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016)............................................................................ 16
`In re Smith Int'l, Inc.,
`871 F.3d 1375 (Fed. Cir. 2017)............................................................................ 11
`InTouch Technologies, Inc. v. VGO Commc'ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014)............................................................................ 32
`K/S Himpp v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014)............................................................................ 32
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)............................................................................ 11
`SAS Institute, Inc. v. Iancu,
`138 S.Ct. 1348 (2018) .......................................................................................... 11
`Tec Air, Inc. v. Denso Mfg. Michigan Inc.,
`192 F.3d 1353 (Fed. Cir. 1999)............................................................................ 31
`Unwired Planet, LLC v. Apple Inc.,
`829 F.3d 1353 (Fed. Cir. 2016)............................................................................ 15
`Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999).............................................................................. 10
`Wasica Finance GMBH v. Continental Auto. Systems,
`853 F.3d 1272 (Fed. Cir. 2017)............................................................................ 16
`
`Statutes
`35 U.S.C. § 314(a) ................................................................................................... 34
`
`
`
`i
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`

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`Rules
`Rules
`37 C.F.R. § 42.108 .................................................................................................. 16
`37 CPR. § 42.108 .................................................................................................. 16
`37 C.F.R. §42.6(a)(3) .............................................................................................. 17
`37 CPR. §42.6(a)(3) .............................................................................................. 17
`37 C.F.R. §42.65(a) ................................................................................................. 17
`37 CPR. §42.65(a) ................................................................................................. 17
`
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`ii
`ii
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`Patent Owner’s Exhibit List for IPR2018-01133
`
`Pursuant to 37 C.F.R. § 42.63(e), Patent Owner Corephotonics Ltd., hereby
`
`submits its exhibit list associated with the above-captioned inter partes review of
`
`U.S. Patent No. 9,538,152.
`
`2002
`
`2003
`
`Exhibit No. Description
`Joint Claim Construction Statement filed in Corephotonics, Ltd.
`2001
`v. Apple Inc., Case No. 5:17-cv-06457-LHK in the U.S. District
`Court for the Northern District of California.
`
`Transcript of Deposition of Oliver Cossairt
`
`Declaration of James Kosmach, Ph.D.
`
`Curriculum Vitae of James Kosmach
`
`Corephotonics’ Opening Claim Construction Brief
`Apple’s Responsive Claim Construction Brief
`U.S. Patent No. 9,185,291, “Dual Aperture Zoom Digital
`Camera”
`
`2004
`
`2005
`2006
`2007
`
`
`
`
`
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`
`iii
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`

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`I.
`
`Introduction
`
`Patent Owner Corephotonics Ltd (“Corephotonics” or “Patent Owner”)
`
`submits this response to the Petition (Paper 2) filed by Apple Inc. (“Apple” or
`
`“Petitioner”) requesting inter partes review (“IPR”) of claims 1–4 of U.S. Patent No.
`
`9,538,152 (Ex. 1001, the “’152 Patent”). The Board granted institution on claims
`
`1–4 on the sole asserted ground of unpatentability constituting a combination of U.S.
`
`Patent Application Pub. No. 2008/0030592 A1 (Ex. 1006, “Border”) and U.S. Patent
`
`No. 7,859,588 B2 (Ex. 1007, “Parulski”). See Paper 8 (Institution Decision). Patent
`
`Owner respectfully submits that the arguments presented herein and the additional
`
`evidence submitted herewith, such as the testimony from Patent Owner’s expert
`
`witness James Kosmach (see, e.g., Ex. 2003, Declaration of James Kosmach,
`
`“Kosmach Decl.”), demonstrate that claims 1–4 are not obvious over the Border
`
`reference in view of the Parulski reference.
`
`The Petition relies on Border in view of Parulski to contend that the prior art
`
`teaches that a dual camera system would use a processor to “provide a output image
`
`from a point of view of the first camera based on a zoom factor (ZF) input that
`
`defines a respective field of view (FOVZF), the first image being a primary image
`
`and the second image [from the second camera] being a non-primary image, wherein
`
`if FOV2<FOVZF<FOV1 then the point of view of the output image is that of the first
`
`camera,” and where the processor is “configured to register the overlap area of the
`
`
`
`1
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`

`

`second image as non-primary image to the first image as primary image to obtain
`
`the output image,” as required by claim 1 of the ’152 Patent.
`
`First, the Petition fails to demonstrate how the prior art shows that “if
`
`FOV2<FOVZF<FOV1 then the point of view of the output image is that of the first
`
`camera.” The Petition points to Border for this limitation, but what it identifies in
`
`Border does not disclose the ability to combine image data from both Wide and Tele
`
`cameras to create a single composite image from the point of view of the first camera
`
`as required by the ’152 patent. Rather, Border teaches stitching together images
`
`from two cameras such that “the edge between the two images in the composite
`
`image is not discernible.” Composite images generated by such image-stitching
`
`techniques are not from the point of view of the first camera. Rather, they have some
`
`image data from the point of view of the first camera and some from the point of
`
`view of the second camera.
`
`Second, the Petition also fails to show how the prior art teaches an artisan to
`
`“register the overlap area of the second image as non-primary image to the first
`
`image as primary image to obtain the output image” as recited in claim 1. For this
`
`limitation, the Petition points to Border’s teaching of “homography … that
`
`transforms the coordinates of telephoto image 206 to the wide image 204.” Petition
`
`(“Pet.”), at 59. But the homography taught by Border does not disclose registration
`
`of the overlap area of a primary image and a non-primary image “to obtain an output
`
`
`
`2
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`

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`image” where the output image is from either the “point of view ... of the first
`
`camera” (claim 1) or the “point of view of the second camera” (claim 2). The
`
`homographic registration techniques taught by Border produce stitched output
`
`images which are from neither the point of view of the first (Wide) camera or the
`
`second (Tele) camera, as such output images contain image data from two cameras,
`
`depicting two different points of view, which are stitched together.
`
`Third, the Petition fails to offer a persuasive reason or explanation for how a
`
`POSITA would add the specific algorithm in Parulski for designating a primary
`
`image and a non-primary image into the system disclosed in Border, where the
`
`simple homography registration used by Border would render a primary/non-
`
`primary image distinction meaningless.
`
`Fourth, the Petition also contends that Border teaches a dual camera system
`
`where, if “FOV2≧FOVZF, then the processor is further configured to provide an
`
`output image from a point of view of the second camera,” as required by claim 2
`
`of the ’152 Patent. But, as Apple’s expert witness conceded during deposition,
`
`Border does not teach an “output image from a point of view of the second camera”
`
`where FOV2>FOVZF, or for that matter, any disclosure “where FOV2 is greater than
`
`FOVZF.” See Ex. 2002, at 74:11-77:24.
`
`
`
`3
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`

`

`II. Background
`
`A. Apple’s Petition
`
`Petitioner Apple Inc. challenged claims 1-4 of the ’152 Patent. The Petition
`
`asserts that independent claim 1, and its sole dependent claim 2, are obvious under
`
`§ 103 over U.S. Patent Application Pub. No. 2008/0030592 A1 (Ex. 1006, “Border”)
`
`and U.S. Patent No. 7,859,588 B2 (Ex. 1007, “Parulski”). Border was considered
`
`by the Examiner during prosecution of the ’152 Patent and was the subject of a
`
`telephone interview between the Examiner and Applicant. In response to that phone
`
`interview, the Applicant amended certain claims to have the patent issue.
`
`The Petition does not provide distinct arguments regarding claims 3 and 4 of
`
`the ’152 Patent. Pet., 66-69 (referring back to the discussion of claims 1 and 2 for
`
`each limitation of claims 3 and 4). Accordingly, this Response focuses on the
`
`Petition’s arguments concerning claims 1 and 2 on the asserted ground of Border
`
`combined with Parulski, because if the Petition does not establish obviousness of
`
`those claims, then it cannot prevail in its challenges to claims 3 and 4.
`
`B.
`
`The ’152 Patent (Ex. 1001)
`
`The ’152 patent is generally directed to a “multi-aperture imaging system
`
`comprising a first camera with a first sensor that captures a first image and a second
`
`camera with a second sensor that captures a second image.” Ex. 1001, at Abstract.
`
`
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`4
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`

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`It was issued on January 3, 2017, and claims priority to a provisional patent
`
`application filed on November 28, 2012.
`
`At the time of its filing, the ’152 Patent addressed the difficulty in the prior
`
`art of including optical zoom functionality in mobile phones. The ’152 Patent
`
`recognized optical zoom solutions (such as mechanical zoom camera modules) was
`
`“common in digital still cameras” but were “typically too thick for most camera
`
`phones.” Ex. 1001, at 1:35-36. Such mechanical zoom modules resulted in “poor
`
`light sensitivity and higher noise (especially in low-level scenarios)” and, in the case
`
`of such mechanical zoom modules being used in mobile cameras, also resulted in
`
`resolution compromise as a result of the technological limitations of such modules.
`
`Id. at 1:25-43. One prior art alternative to mechanical zoom solutions was a
`
`software-based approach: over-sampling a captured image and then cropping and
`
`interpolating it in accordance with a desired zoom level. Id. at 1:44-46. But this
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`approach resulted in “thick optics” and “an expensive image sensor due to the larger
`
`number of pixels” required for generating the raw image data necessary for over-
`
`sampling. Id. at 1:46-49.
`
`Corephotonics developed an innovative dual-aperture camera technology that
`
`uses two fixed-focal length lenses, a wide-angle lens as typically found in
`
`smartphones with single-aperture cameras, and a miniature telephoto lens with
`
`higher resolution in a narrower field of view. Apple adopted this technology in its
`
`
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`5
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`iPhone models with dual rear cameras, starting with the iPhone 7 Plus in September
`
`2016 and continuing with its recent introduction of new iPhone models this year and
`
`last year. The technology is also now used in smartphones made by other
`
`manufacturers, such as Samsung and Huawei.
`
`To make this technology a reality, Corephotonics developed solutions to
`
`obstacles in the prior art to achieving high quality zoom and imaging for mobile
`
`phones, some of which are the subject matter of the ’152 Patent. Apple has cited the
`
`’152 Patent (or its published application) in many of its own mobile phone camera
`
`patents.1
`
`The ’152 Patent teaches a dual-aperture imaging (“DAI”) system that
`
`combines image data from two separate camera sensors, a Wide angle sensor and a
`
`Tele (zoom) sensor, to output a single, high-quality zoomed image. The system
`
`developed by Corephotonics resulted in improved image and color resolution over
`
`conventional multi-aperture (“MAI”) techniques. See id. at 1:60-2:15.
`
`Claim 1 of the ’152 Patent (Ex. 1001) recites (emphasis added):
`
`1. A multi-aperture imaging system comprising:
`
`a) a first camera that provides a first image, the first camera having a first field
`
`of view (FOV1) and a first sensor with a first plurality of sensor pixels covered
`
`at least in part with a standard color filter array (CFA);
`
`
`
`
`1 E.g., U.S. Patent Nos. 9,769,389; 9,774,787; 9,781,345; 10,063,783; 10,122,931; 10,136,048;
`10,200,587.
`
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`6
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`b) a second camera that provides a second image, the second camera having a
`
`second field of view (FOV2) such that FOV2<FOV1 and a second sensor with
`
`a second plurality of sensor pixels, the second plurality of sensor pixels being
`
`either Clear or covered with a standard CFA, the second image having an
`
`overlap area with the first image; and
`
`
`
`c) a processor configured to provide an output image from a point of view
`
`of the first camera based on a zoom factor (ZF) input that defines a respective
`
`field of view (FOVZF), the first image being a primary image and the second
`
`image being a non-primary image, wherein if FOV2<FOVZF<FOV1 then the
`
`point of view of the output image is that of the first camera, the processor
`
`further configured to register the overlap area of the second image as
`
`non-primary image to the first image as primary image to obtain the
`
`output image.
`
`The ’152 patent discloses capturing synchronous images from both Wide and
`
`Tele cameras, and fusing the Wide and Tele images to “reach optical zoom
`
`capabilities.” Id. at 3:11-24. A “different magnification image of the same scene is
`
`grabbed by each subset, resulting in field of view (FOV) overlap between the two
`
`subsets.” Id. at 3:11-14.
`
`
`
`7
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`

`

`
`
`Fig. 1B, above, illustrates the FOV overlap as the area bounded by the dotted
`
`line and is labeled object 110. The synchronous images from the Wide and Tele
`
`cameras are then processed “by the MAI system to fuse and output one fused
`
`(combined) output zoom image processed according to a user ZF [zoom factor] input
`
`request” (id. at 3:17-20), resulting in an output image that has higher image quality,
`
`resolution, and color in comparison with an image captured by either the Wide or
`
`Tele cameras.
`
`Fig. 1B illustrates one of the issues that arise due to the different fields of view
`
`and apertures of a DAI system with a Wide and Tele lens arrangement. The Tele
`
`sensor of a DAI system provides optical zoom capability with improved resolution
`
`but, compared to a Wide sensor, has a narrower field of view. As Fig 1B shows, the
`
`
`
`8
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`

`

`Tele camera image has a narrower field of view than the Wide camera’s image; the
`
`Tele image also overlaps within part of the wider field of view of the image
`
`generated by the Wide camera (the “overlap area”). But because the cameras are at
`
`different spatial positions, the images taken from each of the Wide and Tele cameras
`
`are seen from different points of view (POV), which is the “camera angle” from
`
`which an image is captured. Id. at 9:26-28. The image generated by the Tele sensor
`
`cannot simply be “stitched” onto an overlap area of on the image from the Wide
`
`sensor; each image has a different POV (where standard image stitching produces
`
`parallax errors) and different color resolution, both issues which must be solved to
`
`minimize visual and color artifacts in an output image.
`
`The ’152 Patent explains that combining information from the Tele and Wide
`
`cameras was not straightforward. Though fusion of synchronously captured images
`
`was known in the prior art, the use of “known signal processing algorithms used
`
`together with existing MAI systems” resulted in degraded output image quality by
`
`“introducing artifacts when combining information from different apertures.” Id. at
`
`2:4-7. Those signal processing algorithms, or “image registration” algorithms, were
`
`a “primary source of these artifacts” in the prior art. Id. at 2:6-11.
`
`To address the parallax and color resolution artifacts inherent in prior art MAI
`
`systems, the Patent Owner developed processing algorithms to apply to
`
`synchronously captured Tele and Wide images that included registering the
`
`
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`9
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`

`

`luminance data of the two images as well as “demosaicing” image data to ensure
`
`color correctness in an output image. See id. at 7:49-8:26. As the ’152 Patent
`
`recognizes, “[p]erforming the registration on luminance images has the advantage
`
`of enabling registration between images captured by sensors with different CFAs or
`
`between images captured by a standard CFA or non-standard CFA sensor and a
`
`standard CFA or Clear sensor and avoiding color artifacts that may arise from
`
`erroneous registration.” Id. at 8:21-26. Thus, the claims of the ’152 Patent require
`
`a processor configured to “register the overlap area” of a “second image as non-
`
`primary image” to a “first image as primary image to 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.” Id. at 13:5-17. Importantly, 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 9:26-29.
`
`III. Claim Construction
`
`The Federal Circuit has held that “only those terms need be construed that are
`
`in controversy, and only to the extent necessary to resolve the controversy.” Vivid
`
`Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). This
`
`principle applies equally to IPR proceedings. See, e.g., Apple Inc. v. Uniloc
`
`Luxembourg S.A., IPR2018-00420, Paper 7 at 8 (PTAB, Aug. 6, 2018).
`
`
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`10
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`

`

`A.
`
`“standard color filter array (CFA)”
`
`The Petition asserted that the Board should construe “standard color filter
`
`array (CFA)” to mean “a color filter array including a RGB (Bayer) pattern, RGBE,
`
`CYYM, CYGM, RGBW#1, RGBW#2, or RGBW#3.” Pet., 10. Apple has taken
`
`the same claim construction position in pending district court litigation involving the
`
`’152 Patent, where the parties’ claim construction proposals are as follows:
`
`See, e.g., Ex. 2005, at 11. At the time of institution of the Petition, the Board
`
`determined that no claim terms required express construction at the time. Paper 8,
`
`
`
`at 7.
`
`Corephotonics believes that the term “standard color filter array (CFA)”
`
`requires no construction for the purposes of this proceeding. However, to the extent
`
`that the Board determines it is necessary to construe any claims of the ’152 Patent,
`
`the Petition stated that it “presents claim analysis in a manner consistent with plain
`
`and ordinary meaning in light of the specification,” i.e., the standard used in
`
`District Court, including in the pending district court litigation between the Apple
`
`and Corephotonics. Pet., 10 (emphasis added.); Phillips v. AWH Corp., 415 F.3d
`
`1303 (Fed. Cir. 2005). The Board should thus interpret the claims under the Phillips
`
`
`
`11
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`

`

`standard, rather than BRI, in accord with the Petition. See SAS Institute, Inc. v. Iancu,
`
`138 S.Ct. 1348, 1357 (2018) (“[T]the petitioner's contentions, not the Director's
`
`discretion, define the scope of the litigation all the way from institution through to
`
`conclusion.”).
`
`If the Board were to use the BRI standard, the Federal Circuit has cautioned
`
`that “[t]he protocol of giving claims their broadest reasonable interpretation does not
`
`include giving claims a legally incorrect interpretation divorced from the
`
`specification and the record evidence.” In re Smith Int'l, Inc., 871 F.3d 1375, 1382
`
`(Fed. Cir. 2017) (citations and internal quotations omitted). The specification must
`
`be considered, to determine whether it “proscribes or precludes some broad reading
`
`of the claim term” and to ensure that the interpretation of the claims is “not
`
`inconsistent with the specification.” Id. at 1383. Rather, claims must be afforded an
`
`interpretation that “corresponds with what and how the inventor describes his
`
`invention in the specification.” Id.
`
`Corephotonics’ construction matches the specification’s definition: “A
`
`‘standard CFA’ may include a RGB (Bayer) pattern or a non-Bayer pattern such as
`
`RGBE, CYYM, CYGM, RGBW#1, RGBW#2 or RGBW#3.” Apple’s proposed
`
`construction omits the words “or a non-Bayer pattern such as” from the definition
`
`provided by the specification, without any explanation for doing so.
`
`
`
`12
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`

`

`Finally, because the Apple and Corephotonics have already fully briefed the
`
`specific claim construction issue raised in the Petition, Corephotonics respectfully
`
`notes that its arguments regarding the term “standard color filter array (CFA)” are
`
`found at pages 11–12 of Corephotonics’ Opening Claim Construction Brief, Ex.
`
`2005, at 11–12. Apple’s arguments regarding the term “standard color filter array
`
`(CFA)” are found pages 10–12 of Apple’s Responsive Claim Construction Brief,
`
`Ex. 2006, at 10–12.
`
`B.
`
`“point of view”
`
`The ’152 Patent requires an “output image” that is “from the point of view of
`
`the first camera” and that, specifically, where “if FOV2<FOVZF<FOV1 then the
`
`point of view of the output image is that of the first camera.” Ex. 1001, at 13:9-10.
`
`The Petition did not identify the term “point of view” as a term for
`
`construction. Corephotonics believes that the term “point of view” requires no
`
`construction. Nonetheless, as explained below, Apple’s arguments appear to be
`
`based on a misunderstanding of the term “point of view” which is inconsistent with
`
`its plain and ordinary meaning and as how it is used in the ’152 Patent.
`
`Should the Board conclude that it is necessary to construe “point of view,”
`
`that term should be construed as “camera angle.” Ex. 1001, at 9:26-28; Kosmach
`
`Decl., ¶¶ 25-29. The “point of view” of a given image is the visual perspective
`
`provided by the “camera angle” of the image. Id. Because each camera in a MAI
`
`
`
`13
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`

`

`system occupies different physical space, it is impossible for more than one camera
`
`to capture the same scene from the same point of view at the same time. Each camera
`
`will produce an image with a different point of view, even if only slightly. Id., ¶ 27.
`
`As explained in Corephotonics’ patent, U.S. Patent No. 9,185,291, “Dual Aperture
`
`Zoom Digital Camera” (“the ’291 Patent”) (which cites and shares the same four
`
`inventors as the ’152 Patent):
`
` In a dual-aperture camera image plane, as seen by each sub-camera
`
`(and respective image sensor), a given object will be shifted and have
`
`different perspective (shape). This is referred to as point-of-view
`
`(POV). The system output image can have the shape and position
`
`of either sub-camera image or the shape or position of a
`
`combination thereof. If the output image retains the Wide image shape
`
`then it has the Wide perspective POV. If it retains the Wide camera
`
`position then it has the Wide position POV. The same applies for Tele
`
`images position and perspective.
`
`Ex. 2008, at 4:60-5:2. A POSITA (including the named inventors) would have
`
`understood that a given output image’s point of view “could have the shape and
`
`position of either sub-camera [i.e., either the Wide or Tele camera]” or be a
`
`“combination” of the points of view captured by those cameras. See Kosmach Decl.,
`
`¶¶ 25-29. Each possible point of view for a given output image in the ’152 Patent
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`differs from another, since photographed objects are “shifted and have different
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`perspective” across different points of view. See id.
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`14
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`In contrast, Apple and its expert witness adopted, at different places and times,
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`various definitions of the term “point of view.” First, the Petition assumed that
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`“point of view” means “viewpoint.” Pet., at 54, 64 (citing Jacobson). The term
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`“viewpoint,” however, is found in neither the ’152 Patent or any of the asserted prior
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`art. The Petition defined the term “viewpoint” twice, saying that the “viewpoint is
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`the centre of the pupil of the eye of the observer.” Id. Apple’s expert Dr. Cossairt
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`further stated in his declaration, in the context of Jacobson’s definition of
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`“viewpoint,” that “when a scene is captured by an imaging system, ‘the camera lens
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`takes the place of the eye.’” Ex. 1004 (“Cossairt declaration”), ¶ 114. Apple,
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`therefore, appears to believe that “point of view” means “the center of the camera
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`lens.”
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`During deposition, Apple’s expert Dr. Cossairt confirmed the Petitioner’s
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`position that “point of view” meant “viewpoint.” Ex. 2002, at 38:25-39:1 (“I believe
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`viewpoint and point of view can be used synonymously.”). Cossairt then offered a
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`definition for “viewpoint” that differed from that of the Petition: “[t]he center of
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`projection of the camera lens would be taken as the viewpoint of any imaging
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`system including either an eye or a camera lens system.” Id. at 39:20-23. When
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`asked to explain what the “center of projection of camera lens” would be, Cossairt
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`demurred on specifics:
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`Q. So where is the center of projection of a camera lens?
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`
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`15
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`A. The center of projection for a camera lens can generally
`be, any number of places, including in front of the lens
`assembly, inside of the lens assembly and on the back side
`of the lens assembly.
`
`Id. at 40:1-6. Then, when asked for the academic definition of “center of projection,”
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`Cossairt again demurred on specifics, stating: “The center of projection, there [are]
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`many different definitions.” Id. at 40:11-12.
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`Nothing in the Petition or Cossairt’s deposition testimony explained why
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`“point of view” meant “viewpoint” or “center of projection of the camera lens” in
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`the context of the ’152 Patent. Neither did the Petition or Cossairt offer any reason
`
`to deviate from the plain language in the specification indicating that “point of view”
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`of an image refers to the “camera angle” of that image. See Unwired Planet, LLC v.
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`Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016) (“Claim terms are generally given
`
`their ordinary and customary meaning as understood by a person of ordinary skill in
`
`the art when read in the context of the specification and prosecution history.”). In
`
`any event, Apple not only failed to articulate a consistent definition of “point of
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`view,” the definitions it and its expert witness did offer contradict how the term is
`
`used by the inventors in ’152 Patent and the ’291 Patent. Thus, in the context of the
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`’152 Patent, a POSITA would have understood “point of view” to mean the “camera
`
`angle” of a given image. See Kosmach Decl., ¶¶ 25-29.
`
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`16
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`IV. Applicable Legal Standards
`
`The petitioner has the burden to “demonstrate that there is a reasonable
`
`likelihood that at least one of the claims challenged in the petition is unpatentable.”
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`37 C.F.R. § 42.108. A petition challenging a claim on grounds of obviousness must
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`sufficiently explain (1) “how specific references could be combined,” (2) “which
`
`combination(s) of elements in specific references would yield a predictable result,”
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`and (3) “how any specific combination would operate or read on” the claims.
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`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327-28
`
`(Fed. Cir. 2012).
`
`Moreover, a petitioner may not rely on the Board to substitute its own
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`reasoning to remedy the deficiencies in a Petition. In re Magnum Oil Tools Int’l,
`
`Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (rejecting the Board’s reliance on
`
`obviousness arguments that “could have been included” in the petition but were not,
`
`and holding that the Board may not “raise, address, and decide unpatentability
`
`theories never presented by the petitioner and not supported by the record
`
`evidence”); Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed.
`
`Cir. 2015) (holding that “a challenge can fail even if different evidence and
`
`arguments might have led to success”). Nor may the Petitioner remedy the
`
`deficiencies in a reply brief. Wasica Finance GMBH v. Continental Auto. Systems,
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`853 F.3d 1272, 1286 (Fed. Cir. 2017) (“Rather than explaining how its original
`
`
`
`17
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`

`

`petition was correct, Continental’s subsequent arguments amount to an entirely new
`
`theory of prima facie obviousness absent from the petition. Shifting arguments in
`
`this fashion is foreclosed by statute, our precedent, and Board guidelines.”) (internal
`
`citations omitted).
`
`To the extent that the petition relies on an expert declaration, it must be more
`
`than conclusory and disclose the facts underlying the opinion. See 37 C.F.R.
`
`§42.65(a) (“Expert testimony that does not disclose the underlying facts or data on
`
`which the opinion is based is entitled to little or no weight.”); Edmund Optics, Inc.
`
`v. Semrock, Inc., IPR2014-00583, Paper 50 at 8 (PTAB, Sep. 9, 2015) (affording
`
`little or no weight to “experts’ testimony that does little more than repeat, without
`
`citation to additional evidence, the conclusory arguments of their respective
`
`counsel.”). Nor may the petition rely on the expert declaration to remedy any gaps
`
`in the petition itself. 37 C.F.R. §42.6(a)(3) (“Arguments must not be incorporated
`
`by reference from one document into another document”); see also Cisco Systems,
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`Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 9 (PTAB, Aug. 29, 2014)
`