Trials@uspto.gov
`571-272-7822
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` Paper 8
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` Entered: December 4, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`____________
`
`Case IPR2018-01133
`Patent 9,538,152 B2
`____________
`
`
`
`Before MARC S. HOFF, BRYAN F. MOORE, and MONICA S.
`ULLAGADDI, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314
`
`I. INTRODUCTION
`
`Apple Inc. (“Petitioner”) requests inter partes review of claims 1–4 of
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`U.S. Patent No. 9,538,152 B2 (“the ’152 patent,” Ex. 1001) pursuant to 35
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`571-272-7822
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`
`
`
`
`
`
`
` Paper 8
`
`
` Entered: December 4, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`____________
`
`Case IPR2018-01133
`Patent 9,538,152 B2
`____________
`
`
`
`Before MARC S. HOFF, BRYAN F. MOORE, and MONICA S.
`ULLAGADDI, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314
`
`I. INTRODUCTION
`
`Apple Inc. (“Petitioner”) requests inter partes review of claims 1–4 of
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`U.S. Patent No. 9,538,152 B2 (“the ’152 patent,” Ex. 1001) pursuant to 35
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`IPR2018-01133
`Patent 9,538,152 B2
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`U.S.C. §§ 311 et seq. Paper 2 (“Pet.”). Petitioner relies on the testimony of
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`Dr. Oliver Cossairt. Ex. 1004. Institution of an inter partes review is
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`authorized by statute when “the information presented in the petition . . . and
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`any response . . . shows that there is a reasonable likelihood that the
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`petitioner would prevail with respect to at least 1 of the claims challenged in
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`the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon
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`consideration of the Petition and Preliminary Response, we conclude the
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`information presented shows there is a reasonable likelihood that Petitioner
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`would prevail in establishing the unpatentability of claims 1–4 of the ’152
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`patent.
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`A. Related Matters
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`A decision in this proceeding could affect or be affected by the
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`following case pending in the United States District Court for the Northern
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`District of California and involving the ’152 patent: Corephotonics, Ltd. v.
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`Apple Inc., Case No. 5-17-cv-06457 (N.D. Cal.). Pet. 2; Paper 4, 2 (Patent
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`Owner also asserts Corephotonics, Ltd. v. Apple Inc., Case No. 5:18-cv-
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`02555 (N.D. Cal.) may affect, or be affected by, a decision in this
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`proceeding).
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`B. The ’152 patent
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`The ’152 patent is directed to “multi-aperture imaging (‘MAI’)
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`systems with high color resolution and/or optical zoom.” Ex. 1001, 1:15–18.
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`The ’152 patent states that while mechanical zoom solutions are common in
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`digital still cameras, they are “typically too thick for most camera phones”
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`and may result in “resolution compromise.” Id. at 1:35–43. In its
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`background, the ’152 patent states that one of the known approaches is using
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`a multi-aperture imaging (“MAI”) system, for example, a dual-aperture
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`IPR2018-01133
`Patent 9,538,152 B2
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`imaging system (“DAI”) including “two optical apertures which may be
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`formed by one or two optical modules, and one or two image sensors” for
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`“implementing zoom, as well as increasing the output resolution.” Id. at
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`1:52–59.
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`The Specification states that those known multi-aperture imaging
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`systems “often trade-off functionalities and properties, for example zoom
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`and color resolution, or image resolution and quality for camera module
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`height,” and therefore, there was a need to have thin multi-aperture imaging
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`systems that “produce an image with high resolution (and specifically high
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`color resolution) together with zoom functionality.” Id. at 1:63–66, 1:67–
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`2:3.
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`As a solution to this problem, the’152 patent describes a dual aperture
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`imaging system including a Wide sensor and a Tele sensor capturing a Wide
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`image and a Tele image from two apertures, where color filter arrays may be
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`used in the Wide sensor and Tele sensor. Id. at 2:34–65. The Wide image
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`and Tele image may be fused to “output one fused (combined) output zoom
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`image processed according to a user [zoom factor] ZF input request.” Id. at
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`3:17–20.
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`The ’152 patent describes a dual-aperture zoom imaging system 100
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`including a Wide subset 104 and a Tele subset 106 each having a respective
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`sensor. Id. at Figs. 1A, 1B. The ’152 patent explains that a processor 108
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`“fuses . . . a Wide image obtained with the Wide subset and a Tele image
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`obtained with the Tele subset, into a single fused output image according to
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`a user-defined ‘applied’ ZF input or request.” Id. at 5:60–6:2. The ’152
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`patent explains that an overlap area 110 of the Wide image and Tele image
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`is illustrated on the Wide image in the figure. Id. at 4:62–64, 6:2–9.
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`3
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`To obtain the output image, the ’152 patent teaches a registration
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`process, which “chooses either the Wide image or the Tele image to be a
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`primary image . . . based on the ZF chosen for the output image.” Id. at
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`9:20–21, 31–33. The registration process “considers the primary image as
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`the baseline image and registers the overlap area in an auxiliary image to it,”
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`and the “output image point of view is determined according to the primary
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`image point of view (camera angle).” Id. at 9:20–28.
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`C. Illustrative Claim
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`Independent claim 1, reproduced below, is illustrative of the claimed
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`subject matter:
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`1.
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`A multi-aperture imaging system comprising:
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`a first camera that provides a first image, the first camera
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`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);
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`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 being either Clear or covered with a standard CFA,
`the second image having an overlap area with the first image; and
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`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 a non-primary image to the first image as primary
`image to obtain the output image.
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`
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`Ex. 1001, 12:60–13:13.
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`4
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`D. Asserted Grounds of Unpatentability
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`Petitioner asserts that claims 1–4 are unpatentable based on the
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`following grounds:
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`
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`Reference(s)
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`Border1 and Parulski2
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`Basis
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`§ 103
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`Claims challenged
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`1–4
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`Pet. 12.
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`II. DISCUSSION
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`A.
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`1.
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`Relevant Law
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`Obviousness
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`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
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`between the claimed subject matter and the prior art are such that the subject
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`matter, as a whole, would have been obvious at the time the invention was
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`made to a person having ordinary skill in the art to which said subject matter
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`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
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`question of obviousness is resolved on the basis of underlying factual
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`determinations including (1) the scope and content of the prior art; (2) any
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`differences between the claimed subject matter and the prior art; (3) the level
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`of skill in the art; and (4) where in evidence, so-called secondary
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`considerations, including commercial success, long-felt but unsolved needs,
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`
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`1 US Patent Application Pub. No. 2008/0030592 A1, filed Aug. 1, 2006,
`published Feb. 7, 2008. (“Border,” Ex. 1006).
`2 US Patent No. 7,859,588 B2, filed Mar. 9, 2007, issued Dec. 28, 2010.
`(“Parulski,” Ex. 1007).
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`failure of others, and unexpected results.3 Graham v. John Deere Co.,
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`383 U.S. 1, 1718 (1966) (“the Graham factors”).
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`2.
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`Level of Skill
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`For an obviousness analysis, prior art references must be “considered
`
`together with the knowledge of one of ordinary skill in the pertinent art.”
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`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour,
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`571 F.2d 559, 562 (CCPA 1978)). Moreover, “it is proper to take into
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`account not only specific teachings of the reference but also the inferences
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`which one skilled in the art would reasonably be expected to draw
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`therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968). That is because
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`an obviousness analysis “need not seek out precise teachings directed to the
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`specific subject matter of the challenged claim, for a court can take account
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`of the inferences and creative steps that a person of ordinary skill in the art
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`would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (Fed. Cir.
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`2007); In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007).
`
`Petitioner asserts a person of ordinary skill in the art of the subject
`
`matter of the ’152 patent at the time of the invention would have had a
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`bachelor’s or the equivalent degree in computer science or
`electrical and/or computer engineering or a related field and 2-3
`years of experience in imaging systems including optics design
`and imaging processing [and] a person with less formal
`education but more experience, or more formal education but less
`experience, could have also met the relevant standard for a
`[person of ordinary skill in the art of the subject matter of the
`’152 patent at the time of the invention.]
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`
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`
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`3 Patent Owner does not put forth evidence it alleges tends to show
`secondary considerations of non-obviousness in its Preliminary Response.
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`6
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`Pet. 9 (citing Ex. 1004, ¶ 19). We adopt Petitioner’s articulation of the level
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`of skill and acknowledge that the level of ordinary skill in the art is also
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`reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d
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`1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
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`1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
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`B.
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`Claim Construction
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`In an inter partes review, we construe claim terms in an unexpired
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`patent according to their broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b)
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`(2016). Consistent with the broadest reasonable construction, claim terms
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`are presumed to have their ordinary and customary meaning as understood
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`by a person of ordinary skill in the art in the context of the entire patent
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`disclosure. In re Translogic Tech., 504 F.3d at 1257.
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`In view of our analysis below, we determine that at this stage, no
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`claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci.
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`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms that are in
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`controversy need to be construed, and only to the extent necessary to resolve
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`the controversy).
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`C. 35 U.S.C. § 325 (d)
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`Petitioner argues that we should not exercise our discretion under 35
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`U.S.C. § 325(d) to decline institution because Border4 was before the
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`Examiner during prosecution of the ’152 patent. Pet. 12–13 (citing
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`Limelight Networks, Inc. v. Mass. Inst. of Tech., Case IPR2017-00249, Paper
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`
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`4 Parulski was not before the Examiner. Pet. 13
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`7
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`9, 7 (PTAB May 18, 2017) (instituting despite a § 325(d) challenge where
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`reference was never substantively discussed by Examiner).
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`Petitioner asserts (and we agree) that there was no substantive
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`discussion of Border during the prosecution of the ’152 patent. Pet. 12.
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`Petitioner states that Border was cited in an Information Disclosure
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`Statement (IDS) Form (Ex. 1002, 94), but was not discussed or relied upon
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`for any claim rejection during prosecution of the ’152 patent. Id. Although
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`Border was identified on an IDS, we do not determine that that the same
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`arguments set forth in the Petition were considered by the Examiner. In
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`addition, Border is being put forth as part of an obviousness ground that
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`includes Parulski. The record includes no evidence that the Examiner
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`considered Parulski, or that the combination of Border and Parulski was
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`used by the Examiner to reject any claims. Accordingly, we decline to
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`exercise our discretion to deny institution under 35 U.S.C. § 325(d).
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`D. Obviousness over Border and Parulski
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`1. Overview of Border
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`Border describes providing a digital camera with an extended zoom
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`range without unduly increasing the size or cost of the digital camera “while
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`providing good perceived image quality throughout the zoom range.” Ex.
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`1006 ¶ 10. As shown in Figure 5 of Border, reproduced below, the
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`processor of a digital camera includes an image compositor 202 to form a
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`composite image 208 using the two images, wide image 204 and telephoto
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`image 206 of the same scene, that are captured using lenses having different
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`focal lengths. Id. ¶ 70.
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`8
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`
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`As seen in Figure 5, above, the image registration determiner 212
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`determines the registration between the wide image 204 and the telephoto
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`image 206, so that the two images are matched to “locate the high-resolution
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`image accurately into the low-resolution image and then stitched into place
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`so the edge between the two images in the composite image is not
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`discernible.” Id. ¶ 29, Fig. 5. Border goes on to explain that in the context
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`of Figure 5, telephoto image 206 captures a smaller portion of the scene, but
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`with greater resolution than wide image 204. Id. ¶ 36.
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`Border also describes that an image resampler 214 of the processor
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`produces the composite image 208 based on a zoom amount Z specifying the
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`desired relative zoom amount of the produced composite image 208. Id.
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`¶ 43. Specifically, Border explains that the composite image 208 is
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`generated from the two images and that the resulting composite image is
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`produced differently for different zoom amount values, such as Z=1,
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`1<Z<M, and Z=M, where M is the relative magnification ratio M of the
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`telephoto image 206 to the wide image 204. Id. ¶¶ 29, 44.
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`9
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`2. Overview of Parulski
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`Parulski “utilizes one of the images from a dual-lens camera as a
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`secondary image that can be used to modify the other, primary image and
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`thereby generate an enhanced primary image.” Ex. 1007, 7:32–35.
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`Specifically, Parulski discloses that examples of the enhancement to the
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`primary image include “to sharpen portions of the primary image,” “to
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`modify the dynamic range of the primary image,” or “to replace portions of
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`the primary image (areas of lower noise but with some motion blur) with
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`corresponding portions of the secondary image (areas of higher noise but
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`little or no motion blur) to obtain a modified image with relatively low noise
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`and good sharpness.” Id. at 7:54–8:5, Fig. 26.
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`Parulski describes determining the primary image and secondary
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`image from two capture units of the digital camera based on a requested
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`zoom position provided by a user. Id. at 27:8–24, Fig. 23. For example, if
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`the requested zoom position is not within the zoom range of the current
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`primary capture unit for providing a primary image, “the functions of the
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`capture units are reversed” by switching the capture unit for providing a
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`secondary image and the capture unit for providing the primary image. Id. at
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`27:8–15.
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`3. Priority Date
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`Petitioner asserts Border is a US patent application filed on August 1,
`
`2006 and published on February 7, 2008 and Parulski was filed on March 9,
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`2007, published on September 11, 2008, and issued on December 28, 2010.
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`Pet. 12. Petitioner asserts further that these references are prior art to the
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`’152 Patent under at least 35 U.S.C. § 102(b). Id. The ’152 patent is a
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`National Phase application from PCT patent application
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`10
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`PCT/IB2013/060356 filed November 23, 2013 which claims priority from
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`US Provisional Application No. 61/730,570, filed November 28, 2012. Ex.
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`1001. The ’152 patent issued on January 3, 2017. Id. We accept, at this
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`stage of the proceeding, that Border and Parulski are prior art.
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`4. Analysis
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`Petitioner asserts that claims 1–4 are unpatentable under 35 U.S.C. §
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`103 over Border (Ex. 1006) and Parulski (Ex. 1007). Pet. 14–70.
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`Petitioner provides reasons to combine Border and Parulski including:
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`1) “Border and Parulski are analogous prior art and are in the same field of
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`endeavor pertaining to a digital camera that uses multiple lenses and image
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`sensors to provide an enhanced output image” (id. at 18), 2) “When
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`evaluating the teachings of Border, a POSITA would naturally have
`
`considered the teachings of Parulski, which is a patent that has the same co-
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`inventor (John N. Border) and the same assignee (Eastman Kodak Company,
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`one of the top digital camera makers) as Border” (id. at 19), and 3) “Parulski
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`explicitly provides that its image augmentation process of using a secondary
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`image to modify a primary image ‘can also be applied in connection with
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`image pairs having different resolutions[]’” and “refers to Border’s system
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`as an example for such application, and explicitly incorporates Border by
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`reference” (id. at 18, 20).
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`The preamble of independent claim 1 recites, “A multi-aperture
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`imaging system comprising.” Petitioner contends Border’s digital camera
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`10B teaches a multi-aperture imaging system. Pet. 20–21 (citing Ex. 1006
`
`¶¶ 36, 58, 59, Fig. 1B, Ex. 1002 ¶¶ 63–65).
`
`Independent claim 1 further recites “a first camera that provides a first
`
`image.” Petitioner contends Border describes a digital camera 10B
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`11
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`including two fixed focal length lenses 2 and 4 “each providing an image to
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`a corresponding image sensor 12 and 14” (Ex. 1006 ¶ 58), as such, Border’s
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`wide camera, including fixed focal length lens 2 and corresponding image
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`sensor 12, corresponds to “a first camera that provides a first image” as
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`recited in claim 1. Pet. 23–25 (citing Ex. 1006 ¶¶ 36, 58; Ex. 1002 ¶¶ 67–
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`69).
`
`Independent claim 1 further recites “the first camera having a first
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`field of view (FOV1).” Petitioner contends that Border teaches that its fixed
`
`focal length lens 2 has a first field of view (FOV1) and describes that in an
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`image capture device (e.g., digital camera 10B), “two or more lens systems
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`are associated with a respective number of image sensors. The lenses have
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`different focal lengths and different fields of view within the same scene
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`wherein the field of view of the longer focal length lenses contains at least a
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`portion of the field of view of the shorter focal length lens” (Ex. 1006 ¶ 25).
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`Pet. 25–26 (citing EX. 1006, ¶¶ 25, 31; Ex. 1002 ¶¶ 71–72).
`
`Independent claim 1 further recites “[the first camera having] a first
`
`sensor with a first plurality of sensor pixels covered at least in part with a
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`standard color filter array (CFA).” Petitioner contends that Border teaches
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`that its wide camera includes image sensor 12, which “includes an array of
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`discrete light sensitive picture elements overlaid with a color filter array
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`(CFA) pattern to produce color image data corresponding to the CFA
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`pattern,” (Ex. 1006 ¶ 60) and Border teaches that its sensors 12 and 14 are
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`“single-chip color Megapixel CCD sensors, using the well-known Bayer
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`color filter pattern to capture color images.” (id. ¶ 32). Pet. (citing Ex. 1006
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`¶¶ 32, 60; Ex. 1002 ¶¶ 74–78).
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`12
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`Independent claim 1 further recites “a second camera that provides a
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`second image.” Petitioner contends that Border describes that “the image
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`processor 50 of FIGS. 1A and 1B contains an image compositor 202 that
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`receives both the wide image 204 from the fixed focal length lens 2 and the
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`telephoto image 206 from the zoom lens 3.” (Ex. 1006 ¶ 36). Pet. 28. While
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`some of the description in paragraph 36 of Border references a Figure 1A
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`embodiment in which the telephoto image 206 is from the zoom lens 3,
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`Petitioner contends that a person of ordinary skill in the art would have
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`understood that in the corresponding example of Figure 1B, image processor
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`50 receives the telephoto image 206 from fixed focal length lens 4 (Ex. 1006
`
`¶¶ 36, 58 Figs. 1B, 5; Ex. 1002 81). Pet. 28–30 (citing Ex. 1006, 36, 58; Ex.
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`1002 ¶¶ 79–82.
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`Independent claim 1 further recites “the second camera having a
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`second field of view (FOV2) such that FOV2<FOV1.” Petitioner contends
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`that Border teaches that its fixed focal length lens 4 has a second field of
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`view (FOV2) such that FOV2<FOV1 because Border describes that in its
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`image capture device, “two or more lens systems are associated with a
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`respective number of image sensors. The lenses have different focal lengths
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`and different fields of view within the same scene wherein the field of view
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`of the longer focal length lenses contains at least a portion of the field of
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`view of the shorter focal length lens.” Pet. 31 (citing Ex. 1006 ¶ 25). And,
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`in Border’s digital camera 10B of Figure 1B, the fixed focal length lens 4 is
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`the longer focal length lens and the fixed focal length lens 2 is the shorter
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`focal length lens, for example, “[t]he two fixed focus lenses are selected to
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`provide a substantial zoom range, for example, 3:1 wherein the focal length
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`of the second fixed focal length lens 4 is 3× as long as the fixed focal length
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`lens 2” (Ex. 1006 ¶ 58). Pet. 31–32. As such, according to Petitioner,
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`because the FOV2 of the longer focal length lens 4 “contains at least a
`
`portion of” FOV1 of the shorter focal length lens 2, a POSITA would have
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`understood that FOV2 is less than FOV1. Pet. 31–35 (with further detailed
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`explanation, citing Ex. 1006 ¶¶ 25, 47, 58, Fig. 6; Ex. 1002 ¶ 85–90).
`
`Independent claim 1 further recites “[the second camera having] a
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`second sensor with a second plurality of sensor pixels, the second plurality
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`of sensor pixels being either Clear or covered with a standard CFA.”
`
`Petitioner contends Border teaches that its tele camera includes an image
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`sensor 14, which “includes an array of discrete light sensitive picture
`
`elements overlaid with a color filter array (CFA) pattern to produce color
`
`image data corresponding to the CFA pattern” (Ex. 1006 ¶ 60) and Border
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`teaches that sensors 12 and 14 are “single-chip color Megapixel CCD
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`sensors, using the well-known Bayer color filter pattern to capture color
`
`images” (id. ¶ 32). Pet. 36–37 (citing Ex. 1006 ¶¶ 32, 60; Ex. 1002 ¶¶ 91–
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`95).
`
`Independent claim 1 further recites “the second image having an
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`overlap area with the first image.” Petitioner contends that Border describes
`
`that in its image capture device, “[t]he lenses have different focal lengths
`
`and different fields of view within the same scene wherein the field of view
`
`of the longer focal length lenses contains at least a portion of the field of
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`view of the shorter focal length lens” (Ex. 1006 ¶ 25) and a person of
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`ordinary skill in the art would have understood that the region 220 in Figure
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`6 of Border below corresponds to the overlap area of the telephoto image
`
`206 (e.g., the entire area of the telephoto image 206) with the wide image
`
`14
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`IPR2018-01133
`Patent 9,538,152 B2
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`204 (id. ¶ 32; Ex. 1002 ¶ 98). Pet. 37–39 (citing Ex. 1006 ¶¶ 25, 47; Ex.
`
`1002 ¶¶ 96–100).
`
`Independent claim 1 further recites “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).” Petitioner
`
`contends Border teaches 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) and provides a detailed
`
`explanation of its contention. Pet. 39–48 (citing Ex. 1006 ¶¶ 28, 29, 36–40,
`
`42, 44, 48, 53, 58, 64, 66, Figs. 1B, 5; Ex. 1010 (Szeliski - as support for
`
`motivation to combine), 50–51, Fig. 2.12; Ex. 1008 (Jacobson - as support
`
`for motivation to combine), 5, 57-58; Ex. 1002 ¶¶ 101–115).
`
`Independent claim 1 further recites “[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.” Petitioner contends Border in combination with Parulski renders
`
`obvious the limitation that that the processor is 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 and
`
`provides a detailed explanation of its contention. Pet. 39–48 (citing Ex.
`
`1006 ¶¶ 44; Ex. 1007 (Parulski), 7:32–35, 7:54–8:5, 23:28–40, 53–58, 27:8–
`
`15, 25–31, 28:33–40, 45–67, 29:51–67, 15A, 15B, 16A, 16B, 23, 26; Ex.
`
`1008 (Jacobson - as support for motivation to combine), 5, 57–58; Ex. 1010
`
`(Szeliski - as support for motivation to combine), 50–51, Fig. 2.12; Ex. 1002
`
`15
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`¶¶ 116–123). For example, Petitioner contends that “[a]lthough Border does
`
`not expressly use ‘primary image’ and ‘non-primary image’ labels, Parulski,
`
`in an analogous context, uses the labels ‘primary image’ and ‘secondary
`
`image’ to describe the roles of respective images used in forming a
`
`composite image.” Pet. 49.
`
`Independent claim 1 further recites “wherein if FOV2<FOVZF<FOV1
`
`then the point of view of the output image is that of the first camera.”
`
`Petitioner contends Border teaches a zoom amount 210 Z that defines a
`
`respective field of view (FOVZF) (Ex. 1002 ¶ 125) and Border teaches
`
`providing a composite image 208 from a point of view of the wide camera
`
`(first camera) when the zoom amount 210 Z is between 1 and M, M being
`
`the relative magnification ratio of the telephoto image 206 to the wide image
`
`204 (id.), thus, because FOVZF defined by the zoom amount 210 Z between
`
`1 and M is between FOV1 and FOV2, Border teaches that if
`
`FOV2<FOVZF<FOV1 then the point of view of the output image is that of the
`
`first camera as claimed (id. at ¶ 126). Pet. 55–56 (citing Ex. 1002 ¶¶ 124–
`
`130).
`
`Independent claim 1 further recites “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.” Petitioner
`
`contends that Border in combination with Parulski renders obvious that the
`
`processor is 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 and provides a detailed explanation of its contention. Pet.
`
`57–62 (citing Ex. 1006 ¶¶ 36–40, 43, 45, 47, 48, Fig. 5; Ex. 1007 (Parulski),
`
`7:32–35, 7:54–8:5, 29:51–67; Ex. 1010 (Szeliski - as support for motivation
`
`16
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`IPR2018-01133
`Patent 9,538,152 B2
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`to combine), 50–51, Fig. 2.12; Ex. 1002 ¶¶ 131–142). For example,
`
`Petitioner contends that a person of ordinary skill
`
`would have understood that Border establishes a primary/non-
`primary relationship between first image and second image as
`claimed, though without express usage of the ‘primary image’
`and ‘non-primary image’ labels. However, Parulski, in an
`analogous context, uses the labels ‘primary image’ and
`‘secondary image’ to describe the roles of respective images used
`in forming a composite image.
`
`
`
` Pet. 57–58.
`
`Based on the above contentions, on the record before us, we are
`
`persuaded that Petitioner has provided an articulated reasoning with some
`
`rational underpinning to support the legal conclusion of obviousness. See
`
`KSR Int’l Co. 550 U.S. 398, 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed.
`
`Cir. 2006)). As a result, we are persuaded that the combination of Border
`
`and Parulski proposed by Petitioner is proper.
`
`At this stage in the proceeding, we are persuaded by Petitioner’s
`
`explanations and supporting evidence regarding independent claim 1. Based
`
`on the record before us, Petitioner has demonstrated a reasonable likelihood
`
`that it would prevail on its assertion that independent claim 1 would have
`
`been obvious over Border and Parulski.
`
`a. Claims 2–4
`
`
`
`Because Petitioner has shown a reasonable likelihood of success in
`
`proving that at least one of the challenged claims of the ’152 patent is
`
`unpatentable over Border and Parulski, we institute on all the asserted
`
`grounds and all claims raised in the Petition. See SAS, 138 S. Ct. 1351,
`
`1359–60 (2018). Patent Owner, who did not file a Preliminary Response,
`
`has thus not raised arguments on the merits of Petitioner’s contentions for
`
`17
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`our consideration at this time. Therefore, at this stage of the proceedings, it
`
`is not necessary for us to discuss claims 2–4. Nevertheless, we have
`
`reviewed Petitioner’s arguments and evidence concerning claims 2–4 and
`
`are persuaded that Petitioner also has shown a reasonable likelihood of
`
`success in proving that claims 2–4 are also unpatentable over Border and
`
`Parulski. See Pet. 63–70 (providing a detailed explanation and supporting
`
`citations to the prior art and testimony of Dr. Cossairt).
`
`III. CONCLUSION
`
`We determine that Petitioner has shown a reasonable likelihood that
`
`Petitioner would prevail in proving the unpatentability of at least one claim
`
`of the ’152 patent. Thus,we institute an inter partes review of claims 1–4
`
`over Border and Parulski, as set forth in the Petition.
`
`At this stage of the proceeding, the Board has not made a final
`
`determination as to the patentability of any challenged claim or any
`
`underlying factual and legal issues.
`
`IV. ORDER
`
`In consideration of the foregoing, it is:
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review of claims 1–4 of U.S. Patent No. 9,538,152 is instituted with respect
`
`to the single ground set forth in the Petition; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial
`
`commencing on the entry date of this Decision.
`
`
`
`
`
`18
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`IPR2018-01133
`Patent 9,538,152 B2
`
`PETITIONER:
`
`David W. O’Brien
`Andrew S. Ehmke
`Hong Shi
`HAYNES AND BOONE, LLP
`david.obrien.ipr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
`hong.shi.ipr@haynesboone.com
`
`
`PATENT OWNER:
`
`Neil Rubin
`C. Jay Chung
`Reza Mirzaie
`Russ August & Kabat
`nrubin@raklaw.com
`jchung@raklaw.com
`rmirzaie@raklaw.com
`
`19
`
`
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