Corephotonics, Ltd.

Patent Trials and Appeals Board

Nov 5, 2020

IPR2020-00487 (P.T.A.B. Nov. 5, 2020)

Trials@uspto.gov Paper 13
571-272-7822 Date: November 5, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APPLE INC.,
Petitioner,
v.
COREPHOTONICS, LTD.,
Patent Owner.

IPR2020-00487
Patent 9,661,233 B2

Before BRYAN F. MOORE, GREGG I. ANDERSON, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
ULLAGADDI, Administrative Patent Judge.

DECISION
Granting Petitioner’s Request for Rehearing and
Granting Institution of Inter Partes Review
35 U.S.C. § 314, 37 C.F.R. §§ 42.4, 42.71

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I. INTRODUCTION
Apple Inc. (“Petitioner”) filed a Petition to institute an inter partes
review of claims 1–18 (“the challenged claims”) of U.S. Patent No.
9,661,233 B2 (Ex. 1001, “the ’233 patent”). Paper 2 (“Pet.”).
Corephotonics, Ltd. (“Patent Owner”) filed a Preliminary Response. Paper 6
(“Prelim. Resp.”).
With the Board’s authorization, Petitioner filed a Reply (Paper 7,
“Prelim. Reply”) to Patent Owner’s Preliminary Response, and Patent
Owner thereafter filed a Sur-Reply (Paper 8, “Prelim. Sur-Reply”).
We concluded that Petitioner failed to establish a reasonable
likelihood of prevailing in demonstrating that the challenged claims are
unpatentable. Paper 9 (“Decision” or “Dec.”). Specifically, we concluded
that Petitioner’s rationale for combining Golan and Martin was not
sufficiently supported by a rational underpinning. Dec. 26 (citing KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Accordingly, we declined to
institute trial on the challenged claims of the ’233 patent. Id.
Petitioner filed a request for rehearing (Paper 10, “Rehearing Request”
or “Reh’g Req.”) of our Decision. For the reasons set forth below, the
request is granted.
II. STANDARD OF REVIEW
The burdens and requirements of a request for rehearing are stated in 37
C.F.R. § 42.71(d):
(d) Rehearing. . . . The burden of showing a decision
should be modified lies with the party challenging
the decision. The request must specifically identify
all matters the party believes the Board
misapprehended or overlooked, and the place where
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each matter was previously addressed in a motion,
an opposition, or a reply.
III. PETITIONER’S REHEARING ARGUMENT
Petitioner contends our analysis with respect to claim 1 “centered
around the misapprehended, non-existent, parallax-removal requirement.”
Reh’g Req. 7. Petitioner also characterizes our analysis as “pure hindsight,
because Golan does not mention parallax at all, much less
reducing/eliminating/creating/maintaining parallax.” Id. at 8. Petitioner
further asserts that we “refus[ed] to expressly construe the term [reduce an
image jump effect seen in video output images]” and that our “incorrect
back-door construction permeates [the] motivation to combine analysis.” Id.
at 5.
For the reasons that follow, Petitioner persuades us that we
misapprehended the scope of “reduc[ing] an image jump effect seen in video
output images” as recited in independent claims 1 and 10 in basing our
analysis of Petitioner’s rationale for combining on whether Golan and
Martin teach or suggest “reducing a parallax.” As such, we modify our
earlier Decision to institute an inter partes review as to all challenged claims
and all grounds set forth in the Petition.
Claim 1 recites “a camera controller operatively coupled to the Wide
and Tele imaging sections and configured to reduce an image jump effect
seen in video output images.” Ex. 1001, 13:27–29. Claim 10 recites
“utilizing a controller for reducing an image jump effect seen in video output
images.” Id. at 14:22–23. Petitioner contends “a POSITA would have
understood ‘reduce an image jump effect seen in video output images’ to
mean ‘reduce a discontinuous image change in video output images.’” Pet.
6 (citing Ex. 1003 ¶¶ 41–43).
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In our earlier Decision, we did not “discern a dispute between the
parties regarding this limitation” and therefore, did not expressly construe
this limitation. Dec. 9. While we still do not discern a dispute between the
parties about this limitation, we discuss this limitation in order to give
context to how we misapprehended this limitation, our understanding of
Petitioner’s and Patent Owner’s arguments in our analysis of Golan and
Martin in Section IV.B.1 below, and why we modify our earlier Decision.
Petitioner asserts that the Specification supports its proposed
construction. Pet. 6 (citing Ex. 1001, 10:30–40). In relevant part, the
Specification discloses:
When a dual-aperture camera switches the camera output
between sub-cameras or points of view, a user will normally see
a “jump” (discontinuous) image change. However, a change in
the zoom factor for the same camera and POV is viewed as a
continuous change. A “smooth transition” is a transition between
cameras or POVs that minimizes the jump effect. This may
include matching the position, scale, brightness and color of the
output image before and after the transition. However, an entire
image position matching between the sub-camera outputs is in
many cases impossible, because parallax causes the position shift
to be dependent on the object distance. Therefore, in a smooth
transition as disclosed herein, the position matching is achieved
only in the ROI region while scale brightness and color are
matched for the entire image output area.
Ex. 1001, 10:32–46 (emphasis added).
According to the above-quoted portion of the Specification, a “jump”
is an image change that is discontinuous and an “image jump effect”
requires not just a change but a discontinuity, which is defined as a break or
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interruption.1 In contrast, a parallax is defined as “an apparent change in the
position of an object resulting from a change in position of the observer.”2
We determine that “reduc[ing] an image jump effect seen in video output
images” is not coextensive with reducing a parallax, as Petitioner pointed
out in its Rehearing Request. We further determine that the above-quoted
portion of the Specification supports the determination that “reduc[ing] an
image jump effect seen in video output images” encompasses reducing the
image jump effect in only an ROI in the video output images––for example,
because “an entire image position matching between the sub-camera outputs
is in many cases impossible.” See id. at 10:32–46.
Based on our misapprehension of this limitation of independent claim
1 as being coextensive with “reducing a parallax,” we determined that none
of Petitioner’s reasons for combining Golan and Martin were sufficiently
persuasive. We modify our earlier Decision, as discussed in detail below in
Section IV.B.1, to find that Petitioner’s reasons for combining Golan and
Martin are sufficiently supported based on the understanding of “reduc[ing]
an image jump effect seen in video output images,” as discussed in the
preceding paragraph, and that Petitioner presents a reasonable likelihood of
prevailing in demonstrating unpatentability of least one claim of the ’233
patent.

1 discontinuity. (n.d.) Collins English Dictionary – Complete and
Unabridged, 12th Edition 2014. (1991, 1994, 1998, 2000, 2003, 2006,
2007, 2009, 2011, 2014). Retrieved November 5, 2020 from
https://www.thefreedictionary.com/discontinuity
2 parallax. (n.d.) American Heritage® Dictionary of the English Language,
Fifth Edition. (2011). Retrieved November 5, 2020 from
https://www.thefreedictionary.com/parallax

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Neither Golan nor Martin needs to disclose “reducing a parallax” as
its objective because this feature is not recited in independent claim 1, nor is
independent claim 1’s “reduc[ing] an image jump effect seen in video output
images” limitation coextensive with it. Petitioner does not need to prove a
reasonable expectation of success in achieving the objectives of either
reference when the claim does not recite that objective. See Intelligent Bio-
Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1368 (Fed. Cir.
2016) (holding that the failure of one reference to meet another reference’s
quantitative deblocking requirement was irrelevant to finding that there was
no reasonable expectation of success in meeting the claims of the patent-in-
suit, which did not require quantitative deblocking). In Intelligent Bio-
Systems, the Federal Circuit explained that a reasonable expectation of
success inquiry does not involve determining “whether one would
reasonably expect the prior art references to operate as those references
intended once combined,” but rather determining whether “a motivation to
combine accompanied by a reasonable expectation of achieving what is
claimed in the patent.” Id. at 1367. Accordingly, Golan and Martin are not
incompatible with each other for having different objectives. Even
assuming, arguendo, that Golan discloses reducing a parallax and Martin
discloses the opposite (i.e., creating or maintaining a parallax)––this is not
necessarily fatal to the combination of these references. It is necessary only
to show a reason to modify Golan with Martin and a reasonable expectation
of success “in combining the references to meet the limitations of the
claimed invention.” Id.
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For the foregoing reasons, we grant Petitioner’s Rehearing Request
and modify our earlier Decision to institute inter partes review of the ’233
patent on all challenged claims and all grounds set forth in the Petition.
IV. ANALYSIS
A. Claim Construction
We apply the same claim construction standard used by Article III
federal courts and the ITC, both of which follow Phillips v. AWH Corp., 415
F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. 37 C.F.R. §
42.100(b) (2019). Accordingly, we construe each challenged claim of the
’233 patent to generally have “the ordinary and customary meaning of such
claim as understood by one of ordinary skill in the art and the prosecution
history pertaining to the patent.”
Petitioner proposes a construction for one limitation, as discussed in
further detail below. Pet. 6. Patent Owner does not take a position on claim
construction. See generally, Prelim. Resp.
“reduce an image jump effect seen in video output images”
Claim 1 recites “a camera controller operatively coupled to the Wide
and Tele imaging sections and configured to reduce an image jump effect
seen in video output images.” Ex. 1001, 13:27–29. Claim 11 recites
“utilizing a controller for reducing an image jump effect seen in video output
images.” Id. at 14:22–23. Petitioner contends “a POSITA would have
understood ‘reduce an image jump effect seen in video output images’ to
mean ‘reduce a discontinuous image change in video output images.’” Pet.
6 (citing Ex. 1003 ¶¶ 41–43).
In our earlier Decision, we did not “discern a dispute between the
parties regarding this limitation” and therefore, did not expressly construe
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this limitation. Dec. 9. While we still do not discern a dispute between the
parties about this limitation, we discuss this limitation, for the reasons set
forth above (see supra § III), and as set forth above, we determine that
“reduc[ing] an image jump effect seen in video output images” is not
coextensive with reducing a parallax, as Petitioner pointed out in its
Rehearing Request. We further determine, as discussed above, that the
Specification supports the determination that “reduc[ing] an image jump
effect seen in video output images” encompasses reducing the image jump
effect in only an ROI in the video output images––for example, because “an
entire image position matching between the sub-camera outputs is in many
cases impossible.” Ex. 1001, 10:32–46.
We invite the parties to fully brief these matters of claim construction
at trial.
B. Obviousness over Golan and Martin
Petitioner contends claims 1–4, 7, 10–13, and 16 are unpatentable
under 35 U.S.C. § 103 over Golan and Martin. Pet. 13–53. For the reasons
that follow, we modify our earlier Decision to determine that Petitioner has
sufficiently demonstrated a reasonable likelihood of prevailing with respect
to the challenge to independent claim 1 over Golan and Martin.
1. Analysis of Independent Claim 1
Claim 1 recites, “[a] multiple aperture zoom digital camera,
comprising”
Petitioner contends that Golan teaches “a zoom digital imaging
system with multiple imaging devices each defining an aperture for
capturing a digital image. Pet. 20 (citing Ex. 1005, code (54), ¶¶ 3, 9; Ex.
1003 ¶ 61).
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“a) a Wide imaging section that includes a Wide sensor and a
fixed focal length Wide lens with a Wide field of view (POV), the
Wide imaging section operative to output a Wide image;
b) a Tele imaging section that includes a Tele sensor and a fixed
focal length Tele lens with a Tele POV that is narrower than the
Wide POV, the Tele imaging section operative to output a Tele
image; and”
Specifically, Petitioner argues Golan’s Figure 1 discloses an
embodiment with “a zoom control sub-system 100, which includes ‘a tele
image sensor 110 coupled with a narrow lens 120 . . . a wide image sensor
112 coupled with a wide lens 122 . . . a zoom control module 130 and an
image sensor selector 150.’” Id. at 21 (quoting Ex. 1005 ¶¶ 37, 39) (citing
Ex. 1003 ¶ 62) (emphasis omitted). Petitioner argues that “[i]n Golan’s
image acquisition system, each of the Wide imaging device (including wide
image sensor 112 and wide lens 122) and the Tele imaging device (including
tele image sensor 110 and narrow lens 120) defines an aperture for
generating a corresponding digital image.” Id. at 22 (citing Ex. 1005, Fig. 1;
Ex. 1003 ¶ 63).
According to Petitioner, Golan discloses “a Wide imaging section that
includes wide lens 122 (fixed focal length Wide lens) with FOV 142 (Wide
field of view FOV) and wide image sensor 112 (Wide sensor).” Id. at 22–23
(citing Ex. 1005 ¶¶ 36, 37, Fig. 1; Ex. 1003 ¶ 66). Petitioner asserts that
Golan’s wide lens 122 has a predesigned field of view that is fixed, and is
thus a fixed focal length lens. See id. at 23 (citing Ex. 1001, 7:3–5; Ex. 1003
¶¶ 67–72; Ex. 1005 ¶¶ 9, 36, 37, 43; Ex. 1017, Fig. 4.13, 48).
Petitioner also argues Golan discloses “a Tele imaging section that
includes tele image sensor 110 (Tele sensor) coupled with narrow lens 120
(a fixed focal length Tele lens) having fixed FOV 140 (Tele FOV).” Id. at
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24–25 (citing Ex. 1005, code (57), ¶¶ 36, 37, Fig.1; Ex. 1003 ¶ 76).
Petitioner asserts that Golan’s tele lens 120 has a predesigned field of view
that is fixed, and is thus a fixed focal length lens. See id. at 25 (citing Ex.
1003 ¶ 77; Ex. 1005 ¶¶ 9, 36, 37, 43). Petitioner further argues that Golan
discloses “that tele FOV 140 is narrower than wide FOV 142,” by citing to
Golan’s disclosure that “[p]referably, wide FOV 142 is substantially wider
than narrow FOV 140.” Id. (quoting Ex. 1005 ¶ 43) (citing Ex. 1003 ¶ 78;
Ex. 1005 ¶¶ 9, 37, Fig. 1). Petitioner further notes that “Golan teaches that
zoom control sub-system 100 includes a camera controller including zoom
control circuit 130 coupled to the Wide and Tele imaging sections.” Pet. 26
(citing Ex. 1003 ¶ 82).
“c) a camera controller operatively coupled to the Wide
and Tele imaging sections and configured to reduce an image
jump effect seen in video output images and to provide
continuous zoom video output images by executing registration
between the Wide and Tele images for performing position
matching to the video output images when switching from an
output of the Tele imaging section to an output of the Wide
imaging section or vice versa.”
According to Petitioner, “Golan teaches a camera controller
‘configured to reduce an image jump effect seen in video output images and
to provide continuous zoom video output images…when switching from an
output of the Tele imaging section to an output of the Wide imaging section
or vice versa’ as recited in the claim using electronic calibration.” Id. (citing
Ex. 1003 ¶ 87). Petitioner specifically argues “Golan teaches performing
‘electronic calibration’ to ‘determine the alignment offsets between wide
image sensor array 110 and tele image sensor array 112,’ which ‘facilitates
continuous electronic zoom with uninterrupted imaging, when switching
back and forth between the first image sensor array and the second image
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sensor array.’” Id. at 29 (quoting Ex. 1005 ¶¶ 15, 21) (citing Ex. 1005 ¶¶ 14,
15, 38, 45, 48; Ex. 1003 ¶ 89) (emphasis omitted).
Petitioner contends that “Martin teaches reducing an image jump
effect seen in video output images and providing stable video output images
‘by executing registration between [two images] for performing position
matching to the video output images when switching’ between those two
images as recited in the claim, by performing critical alignment when
switching between two parallax images in video output images.” Id. at 31
(citing Ex. 1003 ¶ 92). Specifically, Petitioner asserts that Martin’s Figure
3, reproduced as annotated below, illustrates registration between two
images. Id. at 32–33 (citing-in-part Ex. 1006, 4:51–59).

Petitioner annotated version of Martin’s
Figures 3a–3d. Id. at 32.3
Petitioner argues “that Martin’s critical alignment teaches determining
correspondences between the coordinate systems of the two images from
different points of view, which represent the registration between [] two

3 According to Petitioner, “[a] POSITA would have understood that element
34’ in FIG. 3b referring to a circle is a clerical error, and instead corresponds
to the rectangle corresponding to region 34.” Pet. 16, n.1.
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images,” thus “executing registration of two images.” Id. at 32–33 (citing
Ex. 1003 ¶ 96; Ex. 1006, 4:56–59, 5:10–50; Ex. 1009 ¶¶ 41, 42; Ex. 1013,
Figs. 2.4, 6.2, Tables 2.1, 6.1, 33–35, 273–77; Ex. 1016, 137). Petitioner
asserts that “registration between two images in critical alignment is used for
performing position matching to the video output images when switching
between the two images.” Id. at 33 (citing Ex. 1003 ¶ 97; Ex. 1006, 5:6–21,
7:36–51). Petitioner further asserts that a person of ordinary skill in the art
“would have understood that the critical alignment of Martin changes with
object distance of the ROI in a specific image, and that critical alignment is
performed when switching between each pair of parallax images.” Id.
(citing Ex. 1003 ¶ 97).
(a) Rationale for Combining Golan and Martin
Petitioner contends that a person of ordinary skill in the art would
have been motivated to apply Martin’s teachings to Golan “to produce the
obvious, beneficial, and predictable results of a stable transition between
images from different points of view for providing continuous zoom video
output images.” Pet. 17 (citing Ex. 1003 ¶¶ 54–59). Petitioner supports its
rationale for combining Golan and Martin with the following reasons.
First, that Golan and Martin “are analogous prior art and are in the
same field of endeavor pertaining to imaging systems generating video
output images using two imaging sections having different points of view.”
Id. (citing Ex. 1003 ¶ 55).
Second, that both Golan and Martin share an objective, that is, “a need
to provide continuous video output images when switching between images
from imaging sections having different points of view, for example, by using
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alignments having sub-pixel accuracy.” Id. at 18 (citing Ex. 1003 ¶ 56); see
id. (citing Ex. 1005 ¶ 15; Ex. 1006, 5:51–55, 5:59–6:5).
Third, that
Golan’s expressed desire to achieve “continuous electronic zoom
with uninterrupted imaging, when switching back and forth
between the first image sensor array and the second image sensor
array” would have motivated a POSITA to incorporate Martin’s
teaching of executing registration using critical alignment of
region of interest in two images having different points of view
to calculate “transformation parameters of sub-pixel resolution”
for position matching to achieve a stable transition in the
continuous zoom video output images of the digital camera of
Golan. It was well known to a POSITA that, for seamless
transition between two images (e.g., from imaging sections
having different points of views and/or wider and narrower fields
of view) in zoom video, when a fixed calibration between the two
imaging sections (e.g., electronic calibration of Golan) is not
sufficient alone (e.g., because calibrated alignments change),
registration of the two images (e.g., critical alignment of Martin)
is beneficial for accurate position matching to video output
images.
Pet. 18–19 (citing Ex. 1005 ¶ 36; Ex. 1006, 5:51–58; Ex. 1003 ¶ 57; see also
id. (citing Ex. 1014, 1:63–2:1; Ex. 1019, 1059; Ex. 1009 ¶¶ 41, 42; Ex. 1003
¶ 57; Ex. 1007, 4:58–62, 10:2–5 (“[i]f calibration between the [wide-angle]
master and slave cameras is insufficient alone, image registration or
matching can be carried out” “to transition between the master view and the
slave view as seamless as possible to create the quality of a continuous zoom
function”)).
Fourth, that “combining the teachings of Martin with the system of
Golan would have produced operable results that are predictable” and that
“combining Martin’s teachings of executing registration using critical
alignment . . . for position matching to achieve a stable transition in
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continuous zoom video output images of the digital camera of Golan would
have been no more than the combination of known elements according to
known methods . . . .” Id. at 19–20 (citing Ex. 1003 ¶ 58). Petitioner asserts
that it “would have been obvious to a POSITA [Person of Ordinary Skill in
the Art] to achieve the benefits of a stable transition in video output images
described by Martin.” Id. at 20.
Fifth, that “a POSITA would have understood that Martin’s teachings
of critical alignment apply to electronic camera systems providing
continuous zoom video output images as taught in Golan, regardless of
whether the position-matched images are switched to provide a three-
dimensional illusion as in Martin” because Golan and Martin have a “shared
goal.” Id. (citing Ex. 1003 ¶ 59).
(b) Patent Owner’s Contentions
Patent Owner contends that “[t]he petition fails to demonstrate that a
POSITA would have looked to a patent directed to intentionally displaying
images with discontinuities, in order to provide an autostereoscopic effect, to
the fundamentally different problem of minimiz[ing] discontinuities to
approximate a mechanical zoom effect.” Prelim. Resp. 12. Patent Owner
asserts that Martin intentionally displays parallax artifacts from two different
images to create a three-dimensional image. See id. at 11–12. Patent Owner
contrasts Martin with the disclosure of the ’233 patent, which Patent Owner
characterizes as disclosing “minimiz[ing] discontinuities such as those that
result from parallax” and “remov[ing] parallax artifacts.” Id. at 10 (citing
Ex. 1001, 10:31–46, 12:61); see id. at 10–11 (quoting Ex. 1002, 314–315).
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(c) Discussion
With respect to Petitioner’s first, second, and fifth reasons regarding
analogous art, similar objectives, and shared goals between the two
references, these reasons do not constitute sufficient rational underpinning to
support Petitioner’s rationale for combining Golan and Martin, in and of
themselves. As to analogous art, the determination that prior art is
analogous based on field of endeavor is alone not sufficient to show
a motivation to combine. Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034,
1051 (Fed. Cir. 2016) (finding that “concluding that the references are
within the scope and content of the prior art to be considered for obviousness
(i.e. analogous art) does not end the inquiry”––motivation to combine must
still be shown).
With respect to Petitioner’s third and fourth reasons, we modify our
earlier Decision to find that these reasons are sufficiently supported by the
cited evidence, at this stage of the proceeding. Petitioner argues that the
ordinarily skilled artisan would have been motivated “to incorporate
Martin’s teaching of executing registration using critical alignment of
region[s] of interest in two images having different points of view to
calculate ‘transformation parameters of sub-pixel resolution’ for position
matching to achieve a stable transition in the continuous zoom video output
images of the digital camera of Golan.” Pet. 19 (citing Ex. 1005 ¶ 36; Ex.
1006, 5:51–58; Ex. 1003 ¶ 57) (emphasis added). Petitioner presents
evidence, Ahiska (Ex. 1007), that tends to show a relation between
electronic calibration and registration for position matching. See Pet. 19, 34
(citing-in-part Ex. 1007, 4:58–62, 10:2–5 (“[i]f calibration between the
[wide-angle] master and slave cameras is insufficient alone, image
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registration or matching can be carried out” “to transition between the
master view and the slave view as seamlessly as possible to create the
quality of a continuous zoom function.”)).
We now determine, at this stage of the proceeding, that Petitioner’s
reasons for combining Golan and Martin are sufficiently supported by the
cited evidence. We understand Patent Owner’s contentions to be centered
on the position that Petitioner has not sufficiently supported its rationale for
combining because Golan and Martin have “fundamentally different”
objectives. See Prelim. Resp. 10–12. We determine, however, that
Petitioner need not show that Martin reduces a parallax or shares a common
objective with Golan, as discussed above, and Golan and Martin are not
incompatible with each other for having different objectives. Even
assuming, arguendo, that Golan discloses reducing a parallax and Martin
discloses something fundamentally different or even opposite (i.e., creating
or maintaining a parallax)––this is not necessarily fatal to Petitioner’s
combination. It is necessary only to show a reason to modify Golan with
Martin and a reasonable expectation of success only “in combining the
references to meet the limitations of the claimed invention.” Intelligent Bio-
Systems at 1367. In Intelligent Bio-Systems, the Federal Circuit explained
that a reasonable expectation of success inquiry does not involve
determining “whether one would reasonably expect the prior art references
to operate as those references intended once combined,” but rather
determining whether “a motivation to combine accompanied by a reasonable
expectation of achieving what is claimed in the patent.” Id.
As we discussed above in Section III, Petitioner does not need to
prove a reasonable expectation of success in achieving the objectives of
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either reference when the claim does not recite that objective. Id. at 1368.
All that is required is determining whether “a motivation to combine
accompanied by a reasonable expectation of achieving what is claimed in the
patent.” Id. at 1367. Accordingly, we are no longer persuaded that
Petitioner’s failure to address Martin’s context or objective––an
autostereoscopic display––renders Petitioner’s rationale for combining
insufficiently supported.
With regard to Patent Owner’s argument contrasting Martin’s
teachings with the disclosure of the ’233 patent, which Patent Owner
characterizes as disclosing “minimiz[ing] discontinuities such as those that
result from parallax” and “remov[ing] parallax artifacts,” (see Prelim. Resp.
10 (citing Ex. 1001, 10:31–46, 12:61) (emphasis added)), we modify our
earlier Decision and characterize this as a teaching away argument. “A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.” Ricoh Co., Ltd. v. Quanta Computer Inc., 550
F.3d 1325, 1332 (Fed. Cir. 2008) (quoting In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006)). Martin does not teach away from the invention claimed
because it does not discourage or lead one in a direction divergent
“reduc[ing] an image jump effect seen in video output images” as recited in
claim 1. We modify our analysis to find that performing a critical alignment
only in an ROI as taught by Martin is not divergent from or incompatible
with the scope of independent claim 1 or the objectives of the ’233 patent.
At this stage of the proceeding, we determine that Martin teaches
aligning images:
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Reference image 30 may include a region of interest 34. The
same region of interest 34’, albeit as viewed from a different
point of view, may appear in unaligned image 32. Unaligned
image 32 may be manipulated, as shown in FIG. 3c, for example,
until region 34’ matches alignment with region 34, as illustrated
in FIG. 3d. The manipulation process may be represented by an
affine transformation including translation, rotation, scaling,
and/or any other desired transformation.
Ex. 1006, 4:51–59. Martin discloses that critical alignment “corresponds to
a condition where the degree of alignment is sufficient to achieve a stable
auto stereoscopic display,” and that “[s]tability of the whole image may not
be required, as long as at least a particular region of interest in the auto
stereoscopic display is stable.” Id. at 5:53–58. According to Martin, the
“alignment process is the use of parallax image manipulations of sub-pixel
resolution to achieve critical alignment” and “the transformations for
achieving critical alignment may proceed to a sub-pixel level where one
image is moved with respect to another image by an amount less than an
integral number of pixels.” Id. at 5:59–65. We further determine that
Martin’s teaching of critical alignment that reduces positional differences in
a region of interest does not conflict with Martin’s teaching of producing or
maintaining parallax artifacts in other portions of the image, on the current
record. See Ex. 1006, 7:46–51 (“while displaying the images, aligning a
user-selected region of interest associated with the first image with a
corresponding region of interest of the second image such that said region of
interest of the first image occupies in the display the same location as the
region of interest in the second image”).
Dr. Durand cites Ahiska (Ex. 1007), Border (Ex. 1009), Orimoto (Ex.
1014), and Hansen (Ex. 1019) to support his testimony. See Ex. 1003 ¶ 57.
(citing Ex. 1007, 4:58–62, 10:2–5; Ex. 1014, 1:63–2:1; Ex. 1019, 1059; Ex.
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1009 ¶¶ 41, 42).4 Dr. Durand’s testimony that “a POSITA would have
understood that Martin’s teachings of critical alignment for stable transition
between images of different points of view apply to electronic camera
systems providing continuous zoom video output [i]mages as taught in
Golan, regardless of whether a three dimensional illusion is provided” is
supported by some of the cited references. The cited portion of Hansen (Ex.
1019) addresses how extrinsic calibration errors occur and “a method to
recalibrate extrinsic parameters online to correct drift or bias.” Ex. 1019,
1059 (emphasis omitted). The cited portion of Orimoto discloses how
misalignment occurs, irrespective of “how exactly the dual lens camera has
been conditioned and adjusted by the manufacturer.” Ex. 1014, 1:63–2:1;
see n.4. The cited portion of Border addresses image registration as an
alternative to correspondence (i.e., calibration). Ex. 1009 ¶¶ 41, 42. And
the cited portions of Ahiska disclose image registration or matching, when
calibration is insufficient, to provide a seamless transition between master
and slave cameras and “create the quality of a continuous zoom function.”
Ex. 1007, 4:58–62, 10:2–5. We modify our earlier Decision to determine
that Ahiska and Border sufficiently support Petitioner’s third and fourth
reasons for combining Golan and Martin, at this stage of the proceeding.
For the foregoing reasons, we are persuaded that Petitioner’s rationale
for combining Golan and Martin is supported by sufficient rational

4 In IPR2020-00860, we note that Dr. Durand cites to a different portion of
Orimoto in column 1, lines 58–62 in connection with his testimony
regarding the rationale for combining Golan and Martin, although he appears
to quote from column 1, line 63 through column 2, line 1. IPR2020-00860,
Ex. 1003 ¶ 46 (citing Ex. 1007, 4:58–62, 10:2–5; Ex. 1014, 1:58–62; Ex.
1019, 1059; Ex. 1009 ¶¶ 41, 42).
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underpinning, based on the current record. See KSR, 550 at 418.
Accordingly, we are persuaded that Petitioner sufficiently demonstrates a
reasonable likelihood of prevailing with respect to establishing the
unpatentability of claim 1 over the combination of Golan and Martin at this
stage of the proceeding.
2. Analysis of Independent Claim 10
Independent claim 10 recites, inter alia, “[a] method for providing
video digital output in a multiple aperture zoom digital camera, comprising
the steps of . . . .” Ex. 1001, 14:12–13. Independent claim 10 also recites
limitations similar to independent claim 1. See id. at 14:14–29. Petitioner
relies on Golan and Martin in substantially the same manner as discussed
above with respect to the challenge of claim 1. See id. at 50–52.
Accordingly, the analysis in the preceding sections is substantially
applicable to the challenge to independent claim 10 over Golan and Martin.
3. Dependent Claims 2–9 and 11–18
As to the remaining claims and grounds asserted in the Petition, Patent
Owner does not raise any arguments. Having decided that Petitioner is
likely to prevail as to at least one claim challenged in the Petition, the review
shall proceed on all challenged claims and on all grounds raised in the
Petition.
C. Discretionary Denial
Petitioner contends that “[a]lthough Golan was applied during
prosecution,” the Board should decline to exercise its discretion under 35
U.S.C. § 325(d) because Becton-Dickinson factors weigh in favor of
institution as follows. Pet. 8. Patent Owner does not address discretionary
denial. See generally, Prelim. Resp.
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Institution of inter partes review is discretionary. See Harmonic Inc.
v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
permitted, but never compelled, to institute an IPR proceeding.”); 35 U.S.C.
§ 314(a). Pursuant to 35 U.S.C. § 325(d), in determining whether to institute
an inter partes review, “the Director may take into account whether, and
reject the petition or request because, the same or substantially the same
prior art or arguments previously were presented to the Office.” In
evaluating arguments under § 325(d), we use
[a] two-part framework: (1) whether the same or substantially
the same art previously was presented to the Office or whether
the same or substantially the same arguments previously were
presented to the Office; and (2) if either condition of first part of
the framework is satisfied, whether the petitioner has
demonstrated that the Office erred in a manner material to the
patentability of challenged claims.
Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential); see also
Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017–01586,
Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5,
first paragraph) (listing factors to consider in evaluating the applicability of
§ 325(d)). Because we determine that the same or substantially same art or
arguments were not previously presented to the Office, we need not reach
the second part of the Advanced Bionics framework.
We begin our analysis with the first part of the Advanced Bionics
framework. In the first part of the framework, we look to Becton, Dickinson
factors (a), (b), and (d) to evaluate “the similarities and material differences
between the asserted art and the prior art” previously presented to the Office
during a proceeding pertaining to the challenged patent (factor (a)), “the
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cumulative nature of the asserted art and the prior art evaluated” previously
(factor (b)), and “the extent of the overlap between the arguments”
previously presented “and the manner in which petitioner relies on the prior
art” (factor (d)). Advanced Bionics, Paper 6 at 9 n.10 (citing Becton,
Dickinson, Paper 8 at 17–18); see id. at 9–10.
The Petition presents four grounds of unpatentability against the
challenged claims—obviousness over the combination of Golan and Martin;
obviousness over the combination of Golan, Martin, and Ahiska;
obviousness over the combination of Golan, Martin, and Levey; and
obviousness over the combination of Golan, Martin, and Parulski. See Pet.
7. According to Petitioner,
During prosecution, Examiner rejected claim 10 (issued as claim
1) based on the combination of Simmons and Golan, relying on
Golan to teach “providing continuous zoom video output images
that minimizes an image jump effect seen by the user during the
switching.” Examiner further relied on the combination of
Simmons, Golan, and Barbara to reject claim 11), stating that
“Simmons and Golan fail to disclose the camera controller is
further configured to perform a registration between the Wide
and Tele images to output a transformation coefficient and to
resample Tele image data or Wide image data according to the
transformation coefficient to eliminate crossover artifacts and
thereby provide position matching to the video output images,”
and instead relied on Barbara to teach the claimed registration for
providing position matching.
In response, Applicant did not dispute directly Golan’s teachings
as relied by the Examiner. Instead, Applicant amended claim 10
to incorporate some subject matter of claim 11 to recite “reduce
an image jump effect seen in video output images and to provide
continuous zoom video output images by executing registration
between the Wide and Tele images for performing position
matching to the video output images when switching from an
output of the Tele imaging section to an output of the Wide
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imaging section or vice versa.” Applicant argued that amended
claim 10 was allowable because the calibration taught by Golan
was “fundamentally different than the claimed position matching
which is repeated when switching from an output of one sensor
to the output of another sensor during zooming.” Id., 315.
Applicant then stated that Barbara “does not add anything
beyond the conventional teaching of [image registration]
methods.” A notice of allowance then issued.
Pet. 8–9 (citing Ex. 1002, 273, 278–79, 305, 315).
With respect to the Petition, the prosecution of the ’233 patent, and
the arguments applied in each, we find salient differences. Petitioner relies
on different prior art––Martin, Ahiska, Levey, and Parulski––combined in
different ways.
In a Request for Continued Examination dated September 23, 2016,
Applicant amended independent claim 10 to recite, inter alia, “a camera
controller . . . configured to reduce an image jump effect seen in video
output images and to provide continuous zoom video output images by
executing registration between the Wide and Tele images for performing
position matching to the video output images when switching from an
output of the Tele imaging section to an output of the Wide imaging section
or vice versa.” Ex. 1002, 305. In arguing the amended features of
independent claim 10 and specifically, the position matching feature,
Applicant distinguished Golan on the basis that Golan’s “calibration
between the sensors assumes a fixed spatial offset between the sensors and is
performed once during manufacturing” and is “therefore fundamentally
different than the claimed position matching which is repeated when
switching from an output of one sensor to the output of another sensor
during zooming.” Id. at 315 (citing Ex. 1005 ¶ 45). Applicant further
argued that “calibration disclosed by Golan does not change with object
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distance in a specific image and therefore it is not intended to, and cannot
alleviate the image artifacts caused by the parallax effect.” Id. Applicant
distinguished Barbara, applied with respect to dependent claims 11 and 20
(see id. at 278–280) on the basis that it “discloses various image registration
methods but does not add anything beyond the conventional teaching of
these methods.” Id. at 315. Applicant also filed a terminal disclaimer over a
parent patent, U.S. Patent No. 9,185,291 (id. at 325–27), thus obviating the
Examiner’s double patenting rejections (id. at 263–67).
In a Notice of Allowance dated November 10, 2016, the Examiner
indicated the combination of features recited in amended independent claim
10 in the Reasons for Allowance section. Id. at 335. Martin is not
cumulative to the references considered and applied during prosecution of
the ’233 because it is cited, in Petitioner’s challenges, to teach the features
that led to allowance, i.e., the limitation that “executing registration between
the Wide and Tele images for performing position matching to the video
output images when switching.”
Accordingly, we do not find that Becton Dickinson factors (a), (b),
and (d) are met for Petitioner’s four challenges based, in part, on Golan and
Martin, and we find that those grounds of unpatentability do not rely upon
the same or substantially the same prior art or arguments considered during
examination of the ’233 patent. See Oticon Medical AB v. Cochlear Ltd.,
IPR2019-00975, Paper 15 at 20 (PTAB Oct. 16, 2019) (precedential)
(declining to exercise discretion when new, noncumulative prior art was
asserted in the Petition). Having failed the first part of the Advanced Bionics
framework, we need not determine whether Petitioner has demonstrated that
the Office erred in a manner material to the patentability of the challenged
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claims. After careful consideration of the record before us, we determine
that, on balance, the totality of the evidence favors declining to exercise our
discretion under 35 U.S.C. § 325(d) to deny institution.

V. CONCLUSION
For the foregoing reasons, we conclude that the information presented
in the Petition demonstrates a reasonable likelihood of prevailing with
respect to establishing that at least one claim of the ’233 patent is
unpatentable. Accordingly, we institute inter partes review of all challenged
claims and all grounds presented in the Petition. See PGS Geophysical AS v.
Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (indicating that a decision
whether to institute an inter partes review “require[s] a simple yes-or-no
institution choice respecting a petition, embracing all challenges included in
the petition”); Guidance on the Impact of SAS on AIA Trial Proceedings
(April 26, 2018).

VI. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that an inter partes review is instituted on all challenged
claims and all grounds set forth in the Petition proceeding.

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For PETITIONER:
David W. O’Brien
david.obrien.ipr@haynesboone.com
Andrew S. Ehmke
andy.ehmke.ipr@haynesboone.com
Hong Shi
hong.shi.ipr@haynesboone.com

For PATENT OWNER:
Neil A. Rubin
nrubin@raklaw.com
C. Jay Chung
jchung@raklaw.com