Corephotonics, Ltd. v. Apple Inc., No. 20-1425 (Fed. Cir. May 20, 2021)

REYNA, Circuit Judge.

Corephotonics, Ltd. appeals a final written decision of the Patent Trial and Appeal Board in an inter partes review brought by Apple Inc. Corephotonics argues that the Board issued its decision in violation of the Appointments Clause because the Board’s decision came after this court’s decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, 1335 (Fed. Cir. 2019) but before this court issued its mandate. On this basis, Corephotonics argues that the Board’s decision should be vacated and remanded. On the merits, Corephotonics argues that substantial evidence does not support the Board’s findings as to patentability. Because we determine that the Board issued its decision after this court’s decision in Arthrex we decline to vacate and remand the Board’s decision underlying this appeal. Moreover, because substantial evidence supports the Board’s patentability determination, we affirm.

BACKGROUND

On May 22, 2018, Apple Inc. (“Apple”) filed a petition for inter partes review at the Patent Trial and Appeal Board (“Board”), asserting that claims 1–4 of U.S. Patent3 No. 9,538,152 (the “’152 patent”) would have been obvious over U.S. Patent Publication No. 2008/0030592 to Border et al. (“Border”) in view of U.S. Patent No. 7,859,588 to Parulski et al. (“Parulski”). J.A. 102.

The ’152 patent is 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.” ’152 patent, Abstract. The ’152 patent discloses a dual-aperture camera used to capture synchronous images from both a wide-angle lens and a miniature telephoto lens with higher resolution in a narrower field. Id., col. 2, ll. 30–43; see also id. col. 2 l. 64–col. 3 l. 10. A “different magnification image of the same scene is grabbed by each subset, resulting in field of view (FOV) overlap between the two subsets.” ’152 patent at col. 3 ll. 11–14. The wide-angle and telephoto images are then fused to output one combined image. Id. at col. 3 ll. 11–24.

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 col. 13 ll. 5–17. The image registration enables the “output image point of view” to be “determined according to the primary image point of view (camera angle).” Id. at col. 9 ll. 26–29. As a result of this image registration process, “the point of view of the output image is that of the first camera,” if the field of view, or FOV, of the second camera (2) is less than the FOV of the first camera (1) based on a zoom factor (ZF) input, or if FOV²<FOVZF<FOV¹. Id. at col. 13 ll. 8–11.¹4 Specifically, the representative asserted claims of the ’152 patent recite:

1. A multi-aperture imaging system comprising: a) a first camera that provides a first image, the first camera 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); 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

5second image as non-primary image to the first image as primary image to obtain the output image. 2. The multi-aperture imaging system of claim 1, wherein, if FOV² FOVZF, then the processor is further configured to provide an output image from a point of view of the second camera.

’152 patent col. 12 l. 59–col. 13 l. 17 (emphasis added).²

The Board issued its final written decision on December 2, 2019, concluding that all challenged claims are unpatentable as obvious. J.A. 1–33; see also Apple Inc. v. Corephotonics Ltd., IPR2018-01133, 2019 WL6523190 (P.T.A.B. Dec. 2, 2019). Of particular importance to the merits of this appeal, the Board found that the Border reference disclosed the limitation “the point of view of the output image is that of the first camera” appearing in claim 1. J.A. 24.

Corephotonics appeals. This court has jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

This court reviews the Board’s factual determinations for substantial evidence and its legal determinations de novo. In re Stepan Co., 868 F.3d 1342, 1345 (Fed. Cir. 2017). Obviousness is a question of law based on subsidiary findings of fact. Id.

I

Before reaching the merits, we address Corephotonics, Ltd.’s (“Corephotonics”) initial argument. Corephotonics argues that the Board’s decision was issued in violation of the Appointments Clause because the Board issued its6 final written decision on December 2, 2019, which was after this court’s decision in Arthrex, but before the associated mandate was issued. Specifically, Corephotonics contends that only the mandate in Arthrex would have ordered compliance by the agency to this court’s opinion in Arthrex.

In Caterpillar, this court determined that final written decisions issued by the Board after the Arthrex decision do not require a remand because they do not implicate the Appointments Clause issues raised in Arthrex. See Caterpillar Paving Prods. Inc. v. Wirtgen Am., Inc., 957 F.3d 1342, 1343 (Fed. Cir. 2020) (denying a motion to vacate and remand based on Arthrex where the Board’s decision issued in November 2019, after the opinion in Arthrex). While the appellant in Caterpillar may not have raised the specific argument regarding the mandate implication that Corephotonics raises here, we see no reason to depart from our holding in Caterpillar for purposes of resolving this appeal. Accordingly, we decline to vacate the Board’s decision and remand to the Board.

II

As to the merits of its appeal, Corephotonics argues that substantial evidence does not support the Board’s finding because Border does not teach providing “an output image from a point of view of the first camera,” as required by the claims. ’152 patent col. 13 ll. 5–6. Instead, Corephotonics contends that Border teaches stitching two images together to provide a composite image with portions from the point of view of the first camera and other portions from the point of view of the second camera. Appellant’s Br. 1– 2, 13. In other words, Border’s teaching produces a composite image with parts having two different points of view, not an image with the “point of view of the first camera.” Id.

The Board concluded that Border’s express disclosure of transforming coordinates from the telephoto to the wide-7angle image, along with the testimony of Apple’s expert, Dr. Oliver Cossairt, is sufficient to meet the limitation. J.A. 24. We agree. Specifically, Border states that it “transforms the coordinates of the telephoto image 206 to the wide image 204.” Border at ¶ 38 (J.A. 694). In addition, Dr. Cossairt testified that transforming the coordinates has the effect of making the telephoto portion of the composite image have the same point of view as the wide image. J.A. 19; see also J.A. 651–52 (Declaration of Dr. Oliver Cossairt). Notably, Corephotonics’s expert did not, and could not, testify to the contrary as he stated that he was not an expert on this particular topic. J.A. 19; see also J.A. 1553–54 (Declaration of Dr. James Koshmach). Accordingly, because substantial evidence supports the Board’s determination, we affirm. The court has considered the remainder of Corephotonic’s arguments and finds them unpersuasive.

CONCLUSION

The court declines to vacate and remand the Board’s decision in view of Arthrex, because the final written decision underlying this appeal issued after this court issued its decision in Arthrex. In addition, substantial evidence supports the Board’s well-reasoned decision, and thus the court affirms the Board’s unpatentability findings as to claims 1–4 of the ’152 patent.

AFFIRMED