`571-272-7822
`
`
`Paper No. 59
` Entered: December 14, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner
`
`
`IPR2020-00905
`U.S. Patent No. 10,225,479 B2
`
`
`
`Before GREGG I. ANDERSON, JOHN F. HORVATH,
`MONICA S. ULLAGADDI, Administrative Patent Judges
`
`HORVATH, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2020-00905
`Patent 10,225,479 B2
`
`
`INTRODUCTION
`
`On November 8, 2021, we issued a Final Written Decision, finding
`Apple, Inc. (“Petitioner”) had failed to demonstrate by a preponderance of
`evidence that any of the challenged claims of U.S. Patent No. 10,255,479
`(“the ’479 patent”) were unpatentable. Paper 51 (“Decision” or “Dec.”).
`Our conclusion was based on our construction of the term “fused image with
`a point of view (POV) of the Wide camera” (“the fused image limitation”),
`which we construed to mean “a fused image having a Wide perspective POV
`and a Wide position POV.” Id. at 12. Although finding the case presented
`“a close issue of claim construction,” the Court of Appeals for the Federal
`Circuit construed the fused image limitation to require a fused image that
`“maintain[s] Wide perspective point of view or Wide position point of view,
`but does not require both.” Paper 54 (Apple Inc. v. Corephotonics Ltd., Case
`Nos. 2022-1350, 2022-1351, slip op. 8–9, 12 (Fed. Cir. 2023)). Thus, the
`Federal Circuit vacated the Final Written Decision and remanded the case
`“for further proceedings consistent with this opinion.” Id. at 17.
` On December 1, 2023, consistent with the procedures set forth in the
`Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov.
`2019)1 (“CTPG”) and after having met and conferred to discuss a remand
`procedure, the parties held a conference call with the Board. See CTPG, 87–
`90. Participating in the conference call were Mr. O’Brien for Petitioner,
`Mr. Rubin for Patent Owner, and Judges Anderson, Horvath, and Ullagaddi.
`A summary of the call is provided in the discussion below.
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`2
`
`
`
`
`
`IPR2020-00905
`Patent 10,225,479 B2
`
`
`DISCUSSION
`
`Petitioner argued that Patent Owner had raised an improper new
`
`argument in its Sur-reply, namely, that Petitioner was combining separate
`embodiments of Parulski to teach the limitations of the challenged claims.
`Therefore, Petitioner requested the parties be granted the opportunity to
`simultaneously file 10-page briefs regarding whether Patent Owner’s Sur-
`Reply raised an improper new argument, followed by simultaneous 5-page
`reply briefs.
`
`Patent Owner disagreed that it had raised any improper new
`arguments in its Sur-Reply or that any briefing on that issue is required.
`Nonetheless, Patent Owner agreed to Petitioner’s proposed briefing schedule
`and brief lengths should the Board decide additional briefing is required.
`
`The Board indicated that no additional briefing was required on this
`issue. In deciding this case on remand, the Board will consider whether
`Patent Owner’s Sur-Reply arguments are improper and treat them
`accordingly. That is, should the Board decide the arguments are improper
`new arguments as Petitioner contends, the Board will identify but not
`consider them. Conversely, should the Board decide the arguments are not
`improper new arguments, the Board will consider the arguments and accord
`them whatever weight they are due.
`The Board also indicated during the call that no additional briefing is
`required on any issue for the Board to issue its decision on remand. Instead,
`the decision on remand will be issued based on the complete trial record
`currently before the Board, considering the arguments and evidence
`provided by Petitioner and Patent Owner, subject to the Federal Circuit’s
`construction of the “fused image” limitation.
`3
`
`
`
`
`
`IPR2020-00905
`Patent 10,225,479 B2
`
`
`It is:
`
`ORDER
`
` ORDERED that Petitioner’s request for additional briefing regarding
`the properness of Patent Owner’s Sur-Reply arguments is denied; and
`FURTHER ORDERED that no additional briefing shall be submitted
`in this case; a decision on remand shall issue in due course.
`
`
`
`
`
`4
`
`
`
`IPR2020-00905
`Patent 10,225,479 B2
`
`For PETITIONER:
`David W. O’Brien
`Andrew S. Ehmke
`Jordan Maucotel
`Hong Sh
`Stephanie Sivinski
`HAYNES AND BOONE, LLP
`david.obrien.ipr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
`jordan.maucotel@haynesboone.com
`hong.shi.ipr@haynesboone.com
`stephanie.sivinski.ipr@haynesboone.com
`
`
`For PATENT OWNER:
`Neil A. Rubin
`C. Jay Chung
`RUSS AUGUST & KABAT
`nrubin@raklaw.com
`jchung@raklaw.com
`
`
`
`5
`
`
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