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In Corephotonics, Ltd. v. Apple Inc., 2022-1340, 2022-1341 (Fed. Cir. October 16, 2023), the decision addresses the Patent Trial and Appeal Board’s (“Board” or “PTAB”) obviousness determinations in five final written decisions. Specifically, this decision concerns the Board committed procedural and substantive errors in concluding the prior art references at issue are analogous art.

Background

 Corephotonics appealed the Board’s final written decisions concluding the challenged claims are unpatentable as obvious.

The Challenged Patents relate to dual-aperture camera systems and disclose techniques for using images from both camera lenses when zooming while capturing video. Two prior art references are part of all of the obviousness grounds Apple presented in its IPR petitions: Golan and Martin. Golan describes camera systems using multiple imaging sensors and lens assemblies to zoom without using a lens with a mechanically adjustable focal length. Martin describes methods for producing two-dimensional images that, upon display, can be perceived to be three-dimensional without the use of special viewing aids. The Board found that Golan and Martin are analogous prior art.

In its petitions, Apple said that the Golan and Martin “references 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.” Apple did not make clear whether it was stating that Golan and Martin are in the same field of endeavor as the Challenged Patents or, instead, merely that Golan and Martin are in the same field of endeavor as one another, and this ambiguity was present in the Apple’s expert declarations.

Moreover, there is no express reference in either Apple’s petitions or its expert declarations to the field of endeavor of the Challenged Patents themselves. Nor is there any explicit contention that Golan and Martin are analogous because they are pertinent to the problem faced by the inventors of the Challenged Patents. However, Corephotonics did not address these issues in its patent owner preliminary response. In addition , the Board’s institution decision did not address the issue of whether Apple had said enough to satisfy its obligation to establish Golan and Martin are analogous art.

After the IPRs were instituted, Corephotonics filed its patent owner response, in which it argued there was a deficiency in how Apple had addressed the analogous art issue at the petition stage. Apple clarified its position in its Replies, explicitly arguing that the Challenged Patents, Golan, and Martin are all in the same field of endeavor. Further, Apple’s Replies added, for the first time, that the two prior art references were also pertinent to the problem faced by the inventors of the Challenged Patents. Corephotonics’s Sur-Reply complained that Apple’s Replies raised completely new arguments.

The Board addressed the analogous art disputes in the final written decisions. First, the Board agreed with Corephotonics that Apple’s treatment of the analogous art issue in its petitions was deficient because Apple and its expert had not explicitly mentioned or discussed the Challenged Patents’ field of endeavor. Instead, the Board found Apple improperly compared Golan and Martin to each other instead of the claimed invention. However, the Board found that Apple’s Replies rectified this improper comparison and asserted that Golan and Martin are in the same field of endeavor as the claimed invention. The Board further held that Apple properly replied to Corephotonics’s criticism of its showing regarding analogous art. The Board also found all Apple’s arguments about the analogousness of its prior art were within the scope of a proper reply. On the merits, the Board’s analogousness analysis was materially uniform across the four IPRs.

On appeal, Corephotonics argued that the Board committed procedural and substantive errors in concluding Golan and Martin are analogous art.

Issue(s)

Whether the Board committed procedural and substantive errors in concluding Golan and Martin are analogous art.

Holding

The Federal Circuit identified no procedural error in the Board’s analysis of whether Golan and Martin are analogous art. The Court further held that the Board’s determination that Golan is analogous art is supported by substantial evidence. However, the Court vacated and remanded the Board’s obviousness determination for the Board to explain why Martin is (or is not) analogous art and how this finding affects its overall conclusion as to obviousness.

Reasoning

Relying on Sanofi-Aventis Deutschland GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023), the Federal Circuit rejected Corephotonics’ argument that the Board abused its discretion by permitting Apple to fix the error in its petition because a petitioner is not required to anticipate and raise analogous art arguments in its petition, and by finding instead that a petitioner can use its reply to respond to, for example, arguments raised in a patent owner response.

The Federal Circuit next rejected Corephotonics’ argument that the Board erred in permitting Apple to argue in reply that its prior art references are analogous to the Challenged Patent because they satisfy both the field of endeavor and pertinent to the problem tests, even though Apple’s petition only invoked the field of endeavor test. In doing so, the Court again relied on Sanofi-Aventis, which explained that a petitioner may use its reply to respond to the patent owner response’s arguments against the references being analogous. The Court noted that Apple was not required to anticipate in its petition that Corephotonics would argue Golan and Martin were not in the same field of endeavor as the Challenged Patents. Once Corephotonics did so in its patent owner response, Apple was permitted to respond both by bolstering its field of endeavor argument and by showing that its prior art is pertinent to the problem faced by the inventors of the Challenged Patents.

The Federal Circuit disagreed with Corephotonics that the Board erred by finding analogousness based on a different field of endeavor and different problem of the inventors than those expressly advocated for by Apple. The Court found no procedural error in the Board’s approach, and noted that as long as substantial evidence supported its findings, the Board may resolve an issue the parties put in dispute by making findings supported by the evidence, regardless of whether any party advocated for that particularly expressed finding. The Court noted that while the Board may not invalidate patent claims on grounds it identifies sua sponte that the petitioner has not actually raised, the Board is not required to use the same words in explaining its findings as the petitioner used in its papers. Therefore, here, too, the Board may make its own finding as to the field of endeavor or problem confronted by the inventors—when those issues are in dispute—even if its finding differs from the parties’ positions. The Court noted that the Board did nothing more than resolve the factual disputes underlying obviousness that the parties presented, and the fact that the Board’s findings differed slightly from what Apple had proposed, and that its articulation of the field of endeavor and pertinent problem were not identical to Apple’s advocacy, do not constitute error. In sum, the Federal Circuit found no procedural error in the Board’s handling of the analogous art issue.

Regarding the Board’s factual findings, the Federal Circuit found that substantial evidence supported that Golan is in the same field of endeavor as the Challenged Patents. As for Martin, both Apple and Corephotonics agreed that the Board’s relevant finding was, as written, incorrect. Apple argued that the Board’s statement included a mere “typographical error” and, therefore, was harmless. The Federal Circuit, however, was unable to discern if the Board’s error was, in fact, merely typographical and harmless or was instead a potentially-impactful error of substance. The Court therefore remanded for further proceedings and directed the Board to explain why Martin is (or is not) analogous art and how this finding affects its overall conclusion as to obviousness.