Corephotonics, Ltd. v. Apple Inc.
20-1424
| Fed. Cir. | Oct 25, 2021Background
- Corephotonics owns U.S. Patent No. 9,402,032 claiming a compact telephoto lens assembly with TTL/EFL ratio < 1.0 and a meniscus second lens element in all embodiments.
- Apple petitioned for inter partes review (IPR) challenging claims 1, 13 (anticipation by Ogino) and claims 14–15 (obviousness over Ogino combined with Chen).
- Ogino’s Example 6 (Table 11 / Figure 6) lists f = 4.428 and TL = 4.387 and contemplates omitting a cover glass to reduce total length; Ogino’s L2 is biconcave. Chen teaches a meniscus second lens.
- Board found Ogino anticipates claims 1 and 13 because Table 11’s TL can be read as the physical total track length of a coverless embodiment (TL 4.387 < f 4.428), and found claims 14–15 obvious by motivation to substitute Chen’s meniscus for Ogino’s biconcave L2 to reduce vignetting and aberration.
- Corephotonics raised an Appointments Clause challenge; the case was remanded under United States v. Arthrex and the Acting PTO Director declined review; Corephotonics does not contest that denial and proceeds only on the merits.
- The Federal Circuit affirms the Board: Ogino teaches the coverless TTL < EFL and substantial evidence supports motivation to combine Ogino and Chen for claims 14–15.
Issues
| Issue | Corephotonics' Argument | Apple’s Argument | Held |
|---|---|---|---|
| Whether Ogino anticipates claims 1 and 13 by teaching a coverless embodiment with TTL/EFL < 1.0 | TL in Table 11 is a theoretical air-converted value, not a physical TTL for a coverless embodiment; Ogino lacks sensor placement details to show TTL < EFL | Table 11 and Ogino’s text contemplate removing the cover glass and the TL value represents the coverless total track length (sum of lens thicknesses/spacing plus Bf), yielding TL 4.387 < f 4.428 | Affirmed. Substantial evidence supports that Ogino teaches a coverless embodiment with TTL (4.387) less than the effective focal length (4.428), anticipating claims 1 and 13. |
| Whether claims 14–15 are obvious by combining Ogino and Chen (motivation to substitute Ogino’s biconcave L2 with Chen’s meniscus) | Ogino teaches the biconcave L2 as necessary to reduce track length; a meniscus would not serve that purpose and the combination is hindsight; Chen does not link meniscus shape to reduced vignetting | A meniscus lens is known to reduce vignetting, ray aberration, and chief-ray angle and increase relative illumination; artisans routinely substitute elements using design software, so motivation to combine exists | Affirmed. Substantial evidence supports motivation to combine: meniscus substitution would reduce vignetting/aberration and is not taught away, making the combination obvious. |
Key Cases Cited
- United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021) (Supreme Court decision prompting remand on Appointments Clause review of PTO adjudications)
- Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016) (standard of review for Board legal and factual determinations)
- Wasica Finance GmbH v. Continental Automotive Sys., Inc., 853 F.3d 1272 (Fed. Cir. 2017) (anticipation is a factual determination)
- PersonalWeb Techs., LLC v. Apple, Inc., 917 F.3d 1376 (Fed. Cir. 2019) (obviousness is a legal conclusion based on subsidiary facts)
- Gen. Elec. Co. v. Raytheon Techs. Corp., 983 F.3d 1334 (Fed. Cir. 2020) (motivation to combine and teaching-away are factual inquiries)
- Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325 (Fed. Cir. 2010) (anticipation requires every claim element disclosed in a single prior-art reference)
- In re Fulton, 391 F.3d 1195 (Fed. Cir. 2004) (disclosure of alternatives does not necessarily teach away)
- Impax Labs., Inc. v. Lannett Holdings Inc., 893 F.3d 1372 (Fed. Cir. 2018) (principles on sufficiency of motivation to combine)
- SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312 (Fed. Cir. 2006) (motivation-to-combine precedent)