Paper No. 7
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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 No. IPR2020-00905
`U.S. Patent No. 10,225,479
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`____________
`
`Case No. IPR2020-00905
`U.S. Patent No. 10,225,479
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`Case No. IPR2020-00905
`U.S. Patent No. 10,225,479
`
`TABLE OF CONTENTS
`
`LIKELIHOOD OF A PRIMA FACIE CASE OF OBVIOUSNESS
`
`The Petition Fails To Demonstrate That Parulski Teaches Creation
`Of A “Fused Image” As Required By Both Of The Independent
`
`Petitioner Has Failed To Show The “Coupled Mechanically”
`
`INTRODUCTION .................................................................. 1
`I.
`II. OVERVIEW OF THE ’479 PATENT ....................................... 2
`III. LEGAL STANDARDS ........................................................... 5
`IV. THE PETITION FAILS TO ESTABLISH THE REASONABLE
` .............................................................................................. 6
`A.
`Claims ............................................................................................. 6
`B.
`Limitation Of [1.3] and [1.4] ........................................................... 9
`V.
`THE ’479 PATENT ............................................................... 11
`VI. CONCLUSION .................................................................... 14
`
`THE BOARD SHOULD EXERCISE ITS DISCRETION TO
`DENY INSTITUTION OF MULTIPLE IPR PETITIONS ON
`
`
`
`i
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`
`
`Case No. IPR2020-00905
`U.S. Patent No. 10,225,479
`
`Cases
`
`TABLE OF AUTHORITIES
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .................................................................. 5
`
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) .................................................................. 5
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) .................................................................. 5
`
`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ............................................................................ 11
`
`Wasica Finance GMBH v. Continental Auto. Systems,
`853 F.3d 1272 (Fed. Cir. 2017) .................................................................. 6
`
`Statutes
`Other Authorities
`Rules
`
`35 U.S.C. § 314(a) ........................................................................................ 11
`
`Consolidated Trial Practice Guide November 2019 ............................... 11, 12
`
`37 C.F.R. § 42.108 .......................................................................................... 5
`
`
`
`ii
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`
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`Case No. IPR2020-00905
`U.S. Patent No. 10,225,479
`
`I.
`
`INTRODUCTION
`
`This Petition should be denied because Petitioner has failed to make out
`
`a prima facie case for invalidity. Both of the challenged independent claims
`
`require the use of two images to create a “fused” image. However, the sole
`
`reference Petitioner relies on for this limitation, Parulski, teaches only using
`
`one image to “enhance” or improve the “focus” of the second image. It con-
`
`tains no discussion of fusing images as taught by the ’479 Patent. For this
`
`reason, all of the Petition’s challenges necessarily fail.
`
`Moreover, the Petition fails to show that its proposed combination ren-
`
`ders obvious claim 1. Petitioner’s argument as to the claim limitations styled
`
`[1.4] and [1.5] are contradicted by Parulski. Petitioner argues that this limita-
`
`tion, which requires “a first autofocus (AF) mechanism” on the Wide lens, is
`
`disclosed by Parulski because a POSITA “would have known” to use a first
`
`AF mechanism with the Wide lens. But Petitioner ignores that the lack of a
`
`first AF mechanism is actually a feature of Parulski. It was an intentional de-
`
`sign choice, made to minimize the cost and size of Parulski’s device. Peti-
`
`tioner ignores this disclosure, let alone explains why a POSITA would have
`
`implemented a first AF mechanism despite Parulski teaching away from the
`
`use of such a mechanism. Petitioner’s further reliance on Konno fails as it
`
`1
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`Case No. IPR2020-00905
`U.S. Patent No. 10,225,479
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`teaches only the use of one AF mechanism and not two as required by the
`
`claims.
`
`For at least these reasons, Petitioner has failed to establish a likelihood
`
`of prevailing and the Petition should not be instituted.
`
`Moreover, the Board should exercise its discretion to deny institution,
`
`even if it does find a likelihood of prevailing. This is one of two IPRs filed
`
`simultaneously by Petitioner to challenge the claims of the ’479 patent. Peti-
`
`tioner has failed to establish that this is one of the “rare” cases where multiple
`
`simultaneous petitions against the same patent are justified.
`
`II. OVERVIEW OF THE ’479 PATENT
`
`The ’479 patent is generally directed to “thin digital cameras with both
`
`still image and video capabilities.” Ex. 1001 at 1:24-26. It was issued on
`
`March 5, 2019, and claims priority to a provisional patent application filed on
`
`June 13, 2013. As the patent described, the prior art included “[a]ttempts to
`
`use multi-aperture imaging systems to approximate the effect of a zoom lens.”
`
`Id. at 1:59-60. One problem with such prior art systems was that they led to
`
`parallax effects when taking video. Id. at 2:39-55. Other solutions led to de-
`
`graded image quality. Id. at 2:56-67. The patent owner, Corephotonics, devel-
`
`oped an innovative dual-aperture camera technology “with fixed focal length
`
`2
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`Case No. IPR2020-00905
`U.S. Patent No. 10,225,479
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`lenses, the camera configured to operate in both still mode and video mode to
`
`provide still and video images, wherein the camera configuration uses partial
`
`or full fusion to provide a fused image in still mode and does not use any
`
`fusion to provide a continuous, smooth zoom in video mode.” Id. at 3:20-25.
`
`The Petitioner, Apple, adopted this technology in its iPhone models with dual
`
`rear cameras, starting with the iPhone 7 Plus in September 2016 and continu-
`
`ing with its successive generations of new iPhone models. The technology is
`
`also now used in smartphones made by other manufacturers, such as Samsung
`
`and Huawei.
`
`Ex. 1001 at Fig. 1B.
`
`To make this technology a reality, Corephotonics developed solutions
`
`to practical issues, some of which are the subject matter of the ’479 patent.
`
`
`
`3
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`Case No. IPR2020-00905
`U.S. Patent No. 10,225,479
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`For example, Corephotonics developed technology that results in a “fused im-
`
`age including always information from both W [“Wide”] and T [“Tele”] im-
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`ages.” Id. at 3:48-51. One embodiment of this technology allows out-of-focus
`
`background to be fused with another image of an in focus subject, creating for
`
`example a blurrier background and creating the effect of a even shallower
`
`DOF. The inventive process is summarized in the ’479 patent as follows:
`
`Due to the large focal length, objects that are in front or behind the
`plane of focus appear very blurry, and a nice foreground-to-back-
`ground contrast is achieved. However, it is difficult to create such
`a blur using a compact camera with a relatively short focal length
`and small aperture size, such as a cell-phone camera. In some em-
`bodiments, a dual-aperture zoom system disclosed herein can be
`used to capture a shallow DOF photo (shallow compared with a
`DOF of a Wide camera alone), by taking advantage of the longer
`focal length of the Tele lens. The reduced DOF effect provided by
`the longer Tele focal length can be further enhanced in the final
`image by fusing data from an image captured simultaneously with
`the Wide lens. Depending on the distance to the object, with the
`Tele lens focused on a subject of the photo, the Wide lens can be
`focused to a closer distance than the subject so that objects behind
`the subject appear very blurry. Once the two images are captured,
`information from the out-of-focus blurred background in the Wide
`image is fused with the original Tele image background infor-
`mation, providing a blurrier background and even shallower DOF.
`Ex. 1001 at 4:18-38.
`
`4
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`Case No. IPR2020-00905
`U.S. Patent No. 10,225,479
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`III. 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 unpatent-
`
`able.” 37 C.F.R. § 42.108. A petition challenging a claim on grounds of obvi-
`
`ousness must sufficiently explain (1) “how specific references could be
`
`combined,” (2) “which combination(s) of elements in specific references
`
`would yield a predictable result,” and (3) “how any specific combination
`
`would operate or read on” the claims. 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
`
`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 un-
`
`patentability 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
`
`5
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`Case No. IPR2020-00905
`U.S. Patent No. 10,225,479
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`Auto. Systems, 853 F.3d 1272, 1286 (Fed. Cir. 2017) (“Rather than explaining
`
`how its original 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 prec-
`
`edent, and Board guidelines.”) (internal citations omitted).
`
`IV. THE PETITION FAILS TO ESTABLISH THE
`REASONABLE LIKELIHOOD OF A PRIMA FACIE CASE
`OF OBVIOUSNESS
`
`A. The Petition Fails To Demonstrate That Parulski Teaches Cre-
`ation Of A “Fused Image” As Required By Both Of The Inde-
`pendent Claims
`
`Both of the challenged independent claims require processing the
`
`“Wide and Tele images to create a fused image.” [1.5.1], [23.3]. Petitioner
`
`relies solely on teachings from Parulski for these limitations. Paper 3 at 26-
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`29, 39. However, Parulski does not teach, or render obvious, the creation of a
`
`“fused image.”
`
`In the portion of Parulski cited by Petitioner (Ex. 1005 at 28:45-57),
`
`teaches “combining” images by using the secondary image to “enhance the
`
`depth of field of the primary image:
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`6
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`Case No. IPR2020-00905
`U.S. Patent No. 10,225,479
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`
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`Ex. 1005 at 16, Fig. 14; Id. at 28:45-57 (“In a first type of augmentation
`
`or modification, and as was depicted in connection with FIG. 14, an image
`
`is captured from the primary capture unit at one focus position and another
`
`image is captured from the scene analysis capture unit …. Then, the two im-
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`ages are combined into modified image with a broadened depth of field.” (em-
`
`phasis added)). Petitioner’s secondary cite to 22:14-42 of Parulski refers to
`
`using the image processor to “focus,” not “fuse,” the image. Id. at 22:14-42
`
`(“the second image capture stage 2 is used to capture autofocus images for
`
`autofocus of the first image capture stage 1, which are processed by image
`
`processor 50 and used to focus the first image capture stage 1.” (emphasis
`
`added)).
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`7
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`Case No. IPR2020-00905
`U.S. Patent No. 10,225,479
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`The use of one image to “enhance” or “focus” another does not teach
`
`“fusing” two images as claimed by the ’479 patent. See Ex.1001 at 2:25-26
`
`(“The images are then stitched (fused) together to form a composite (“fused”)
`
`image.”); id. at 3:47-52 (“In still mode, zoom is achieved ‘with fusion’ (full
`
`or partial), by fusing W and T images, with the resulting fused image includ-
`
`ing always information from both W and T images.” (emphasis added)); id.
`
`at 3:64-4:3 (“The fused image is processed according to a user zoom factor
`
`request. As part of the fusion procedure, up-sampling may be applied on one
`
`or both of the grabbed images to scale it to the image grabbed by the Tele sub-
`
`camera or to a scale defined by the user.”). Parulski does not teach that any
`
`pixels from the second image are included, or fused, in the first image.
`
`The Petition’s reliance on the “dog and mountain” example from Pa-
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`rulski is misplaced. Paper 3 at 27-28. This example concerns Parluski’s teach-
`
`ing of a “range map” which involves post-processing techniques to improve
`
`the image after it has already been captured. Ex. 1005 at 19:49-20:15 (“A map
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`is then produced in block 484 showing the distances to different portions of
`
`the image.”). Moreover, nothing in this example teaches “fusing” two images.
`
`8
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`Case No. IPR2020-00905
`U.S. Patent No. 10,225,479
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`Accordingly, the Petition fails to show that Parulski teaches or renders
`
`obvious the creation of a “fused image.” As this is a requirement of both chal-
`
`lenged independent claims, all of the Petition’s challenges necessarily fail.
`
`B.
`
`Petitioner Has Failed To Show The “Coupled Mechanically”
`Limitation Of [1.3] and [1.4]
`
`[1.3] requires “a first autofocus (AF) mechanism coupled mechanically
`
`to, and used to perform an AF action on the Wide lens” and [1.4] requires “a
`
`second AF mechanism coupled mechanically to, and used to perform an AF
`
`action on the Telephoto lens.” Paper 3 at 23-25. Petitioner has failed, however,
`
`to show that wide angle lens 612 in Parulski, which is purported to be the
`
`claimed Wide lens, has a “first autofocus (AF) mechanism coupled mechani-
`
`cally to it.” In the portion of Parulski cited by Petitioner, Parulski discloses
`
`autofocus subsystem 628, which is connected to telephoto lens 616, not wide
`
`angle lens 612. Ex. 1005 at 23:62-24:7; Paper 3 at 45-46.
`
`Petitioner recognizes this issue, and argues that a POSITA “would have
`
`understood” to use a similar “autofocus mechanism” with the purported Wide
`
`lens. Paper 3 at 24. But Petitioner cites no evidence for its argument. Instead,
`
`it cites to the Durand Declaration (Ex. 1003) that simply parrots Petitioner’s
`
`attorney argument. Neither Petitioner nor the Durand Declaration explain
`
`why, without the benefit of hindsight, a POSITA would have understood this.
`
`9
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`Case No. IPR2020-00905
`U.S. Patent No. 10,225,479
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`Further, Petitioner also fails to explain why a POSITA would have known to
`
`use a separate autofocus (AF) mechanism coupled mechanically to the
`
`Wide lens instead of, for example, utilizing autofocus subsystem 628. Peti-
`
`tioner’s argument is also contradicted by Parulski itself. Parulski deliberately
`
`discloses a single focusing subsystem: to reduce “cost and size.” Ex. 1005 at
`
`24:17-19; see also id. at Fig. 16B (showing only one focusing subsystem).
`
`Parulski discloses that size (which is reduced by not having a second focusing
`
`subsystem) is an “important constraint.” Id. at 24:20-27. Simply put, Parulski
`
`teaches away from using a second focusing subsystem. Petitioner does not
`
`explain why, despite these disclosures of Parulski, a POSITA “would have
`
`understood” the use of an autofocus system on wide angle lens 612.
`
`Petitioner’s further reliance on Konno in combination with Parulski,
`
`does not save its challenge. Konno only teaches the use of a single AF mech-
`
`anism as opposed to the two mechanisms required by claim 1. Ex. 1015 at ¶15
`
`(“a lens moving mechanism for focusing”). Petitioner again fails to explain
`
`why “a POSITA would have understood that each lens system’s focusing
`
`movement is mechanically coupled to its respective lens system” other than
`
`through citations to the Durand declaration which only parrots the attorney
`
`argument. Paper 3 at 24-25.
`
`10
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`Case No. IPR2020-00905
`U.S. Patent No. 10,225,479
`
`Accordingly, the Petition’s obviousness challenge to claim 1 fails.
`
`V. THE BOARD SHOULD EXERCISE ITS DISCRETION
`TO DENY INSTITUTION OF MULTIPLE IPR
`PETITIONS ON THE ’479 PATENT
`
`The Board is never required to institute an IPR. Even if the Board de-
`
`termines the reasonable likelihood standard is met by a petition, the decision
`
`to institute is discretionary. 35 U.S.C. § 314(a); SAS Inst., Inc. v. Iancu, 138
`
`S. Ct. 1348, 1361 (2018) (“Even if there is one potentially meritorious chal-
`
`lenge, we have said that the statute contains ‘no mandate to institute review,’
`
`so the Director still has discretion to deny a petition.”).
`
`The Board has recognized that multiple petitions filed against the same
`
`patent at the same time “may place a substantial and unnecessary burden on
`
`the Board and the patent owner and could raise fairness, timing, and efficiency
`
`concerns.” Consolidated Trial Practice Guide November 2019 at 59. The
`
`Board has indicated that such multiple petitions “are not necessary in the vast
`
`majority of cases” and “should be rare.” Id.
`
`Petitioner fails to show this case is “rare” such that multiple petitions
`
`are justified. The IPR2020-00906 Petition adds only an additional four chal-
`
`lenged claims to the claims challenged in IPR2020-00905. Furthermore, the
`
`challenges to all of the claims in both petitions are based on obviousness with
`
`11
`
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`Case No. IPR2020-00905
`U.S. Patent No. 10,225,479
`
`the same primary reference, Parulski. This is not a case involving “a large
`
`number of claims [asserted] in litigation” or “a dispute about priority date,”
`
`which are the circumstances identified in the Trial Practice Guide as poten-
`
`tially justifying multiple petitions. Consolidated Trial Practice Guide Novem-
`
`ber 2019 at 59. A petition raising this number of grounds against a small
`
`number of claims could readily have been drafted within the 14,000-word
`
`limit for a single petition. But petitioner has instead burdened the Board and
`
`patent owner with petitions totaling 27,619 words (just shy of the 28,000-word
`
`limit for two petitions), and the need to prepare double the number of filings
`
`and double the number of decisions that would ordinarily be required to re-
`
`solve the challenges to a single patent.
`
`Petitioner acknowledges that “all of the claims are directed to a dual-
`
`lens camera with wide and telephoto lenses (1) having overlapping fields of
`
`view (FOV) and (2) an autofocus mechanism providing each lens with sepa-
`
`rate focusing control.” Paper 2. However, it attempts to justify its decision to
`
`file two-separate, near 14,0000-word IPRs because the claims purportedly
`
`“perform different image processing steps.” Id. at 1. This assertion rings hol-
`
`low. It is always the case that there are differences in claims. The ’479 patent
`
`12
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`Case No. IPR2020-00905
`U.S. Patent No. 10,225,479
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`is no different than any other patent in this respect. Indeed, even under Peti-
`
`tioner’s summary, the primary difference between the claims is a “different
`
`image processing steps” involves “calculating a depth map.” The first element
`
`of all of the claims is “controlling the autofocus mechanism.” Id. at 2. Like-
`
`wise, the final step under Petitioner’s summary of the claimed inventions both
`
`involve outputting a “fused image.” Id. Petitioner fails to show why image
`
`processing elements alone require almost 14,000 additional words.
`
`The overlap between the two Petitions is also emphasized by the fact
`
`that the Petitioner uses the same prior art as its “primary” reference (Parulski)
`
`and the secondary prior art references in both Petitions relate to the same sub-
`
`ject area.
`
`Moreover, Petitioner previously filed an unsuccessful IPR petition
`
`IPR2018-01348, which challenged U.S. Patent No. 9,185,291, the grandpar-
`
`ent to the ’479 patent. In that petition, Petitioner challenged 10 claims of the
`
`’291 patent, again using Parulski as the primary prior art reference. IPR2018-
`
`01348, Paper 2 at 8. In IPR2018-01348, Petitioner was able to challenge 10
`
`claims, concerning both image processing and optical design. Petitioner has
`
`not shown why it was able to address all of the claims in IPR2018-01348 but
`
`13
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`Case No. IPR2020-00905
`U.S. Patent No. 10,225,479
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`needs an additional 14,000-word Petition to address the claims in the Petitions
`
`at issue here.
`
`Petitioner’s unjustified decision to burden the Board and patent owner
`
`with 27,619 words of Petitions challenging the ’479 patent should not be re-
`
`warded, and the Board should exercise its discretion to deny this Petition.
`
`VI. CONCLUSION
`
`For the reasons set forth above, the petition fails to establish a reasona-
`
`ble likelihood of prevailing on any challenged claim. The Petition should also
`
`be denied in the Board’s discretion as a result of Petitioner’s multiple Petitions
`
`addressing the ’479 patent. Patent Owner respectfully requests that the Board
`
`deny institution.
`
`
`
`Dated: August 13, 2020
`
`
`
` /Neil A. Rubin/
`Neil A. Rubin (Reg. No. 67,030)
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`Telephone: 310-826-7474
`
`Attorney for Patent Owner,
`COREPHOTONICS, LTD.
`
`14
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`
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`Case No. IPR2020-00905
`U.S. Patent No. 10,225,479
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`CERTIFICATE REGARDING WORD COUNT
`
`Pursuant to 37 C.F.R. § 42.24(d), Patent Owner certifies that there are
`
`2,736 words in the paper excluding the portions exempted under 37 C.F.R. §
`
`42.24(a)(1).
`
`
`
`
` /Neil A. Rubin/
`Neil A. Rubin (Reg. No. 67,030)
`
`
`15
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`
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`Case No. IPR2020-00905
`U.S. Patent No. 10,225,479
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`CERTIFICATE OF SERVICE
`
`I hereby certify that “Patent Owner’s Preliminary Response” (Paper No. 7)
`
`was served on August 13, 2020 by email sent to:
`
`Michael S. Parsons
`Andrew S. Ehmke
`Jordan Maucotel
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`Telephone: 214-651-5000
`Email: michael.parsons.ipr@haynesboone.com
`Email: andy.ehmke.ipr@haynesboone.com
`Email: jordan.maucotel.ipr@haynesboone.com
`
`
` /Neil A. Rubin/
`Neil A. Rubin (Reg. No. 67,030)
`
`
`16
`
`
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