Case: 22-1340 Document: 50 Page: 1 Filed: 10/16/2023
`
`
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`COREPHOTONICS, LTD.,
`Appellant
`
`v.
`
`APPLE INC.,
`Appellee
`______________________
`
`2022-1340, 2022-1341
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2020-
`00487, IPR2020-00860.
`
`
`-------------------------------------------------
`
`
`
`COREPHOTONICS, LTD.,
`Appellant
`
`v.
`
`APPLE INC.,
`Appellee
`______________________
`
`2022-1455, 2022-1456
`______________________
`
`
`

`

`Case: 22-1340 Document: 50 Page: 2 Filed: 10/16/2023
`
`2
`
`COREPHOTONICS, LTD. v. APPLE INC.
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2020-
`00861, IPR2020-00862.
`______________________
`
`Decided: October 16, 2023
`______________________
`
`BRIAN DAVID LEDAHL, Russ August & Kabat, Los Ange-
`les, CA, argued for appellant. Also represented by MARC A.
`FENSTER, NEIL RUBIN, JAMES S. TSUEI.
`
` DEBRA JANECE MCCOMAS, Haynes and Boone, LLP,
`Dallas, TX, argued for appellee in 2022-1340. Also repre-
`sented by ANDREW S. EHMKE; DAVID W. O'BRIEN, HONG SHI,
`Austin, TX; ANGELA M. OLIVER, Washington, DC. Also ar-
`gued by ERIN MARIE BOYD LEACH, Orrick, Herrington &
`Sutcliffe LLP, Irvine, CA, in 2022-1455. Also represented
`by MARK S. DAVIES, Washington, DC.
`______________________
`
`Before STOLL, LINN, and STARK, Circuit Judges.
`STARK, Circuit Judge.
`Corephotonics, Ltd. (“Corephotonics”) appeals final
`written decisions (“Decisions”) of the Patent Trial and Ap-
`peal Board (“Board”) concluding that claims of U.S. Patent
`Nos. 9,661,233 (“’233 patent”), 10,230,898 (“’898 patent”),
`10,326,942 (“’942 patent”), and 10,356,332 (“’332 patent”)
`(collectively, the “Challenged Patents”) are unpatentable
`
`

`

`Case: 22-1340 Document: 50 Page: 3 Filed: 10/16/2023
`
`3
`
`COREPHOTONICS, LTD. v. APPLE INC.
`
`
`as obvious. The Decisions were each issued in inter partes
`reviews (“IPR”) initiated by Apple Inc. (“Apple”).1
`Corephotonics principally challenges the Board’s anal-
`ogous art findings, arguing that the Board made two pro-
`cedural errors and one substantive error. In terms of
`procedure, Corephotonics contends that the Board
`erred (1) by permitting Apple to cure the legally flawed
`analogous art contention it made in its petition and (2) by
`making analogous art findings that deviated from the con-
`tentions Apple advocated for in its petition and reply. As
`for substance, Corephotonics asserts that prior art refer-
`ences U.S. Patent Application Publication No.
`2012/0026366 (“Golan”) and U.S. Patent No. 8,081,206
`(“Martin”) are not analogous art.
`We identify no procedural error in the Board’s handling
`of whether Golan and Martin are analogous art. We
`
`1 Appeal Nos. 22-1340 and 22-1341 concern the ’233
`and ’942 patents, respectively. Appeal Nos. 22-1455 and
`22-1456 concern the ’898 and ’332 patents, respectively.
`We consolidated Appeal Nos. 22-1340 and 22-1341 and sep-
`arately consolidated Appeal Nos. 22-1455 and 22-1456.
`Each of the consolidated appeals has its own Joint Appen-
`dix. For simplicity, when we cite to a reference included in
`both Joint Appendices, we include the citation only for No.
`22-1340/1341. We make clear where we are citing solely to
`the appendix in No. 22-1455/1456 (which we refer to with
`the designation “No. 1455”).
`
`There are no material differences between the written
`descriptions of the ’233 and ’942 patents or between the
`written descriptions of the ’898 and ’332 patents. We cite
`to the ’233 patent alone when describing both the ’233 and
`’942 patents and to the ’898 patent alone when describing
`both the ’898 and ’332 patents.
`
`

`

`Case: 22-1340 Document: 50 Page: 4 Filed: 10/16/2023
`
`4
`
`COREPHOTONICS, LTD. v. APPLE INC.
`
`further hold that the Board’s determination that Golan is
`analogous art is supported by substantial evidence. How-
`ever, we vacate and remand the Board’s obviousness deter-
`mination for the Board to explain why Martin is (or is not)
`analogous art and how this finding affects its overall con-
`clusion as to obviousness.
`
`I
`A
`The Challenged Patents relate to dual-aperture cam-
`era systems and disclose techniques for using the images
`from both lenses when zooming while capturing video. ’233
`patent 3:28-30, 49-54; ’898 patent 3:26-28, 36-41. Typi-
`cally, a dual-aperture camera system includes a wide-lens
`camera and a tele-lens camera.2 When zooming in, the dis-
`closed dual-aperture camera systems can switch from the
`wide-lens camera to the tele-lens camera, and when zoom-
`ing out the opposite can occur.
`The wide-lens camera has a larger field of view than
`the tele-lens camera. “Field of view” refers to the extent of
`the observable world a camera system is capable of captur-
`ing; that is, whether the camera captures a relatively
`larger or smaller area. Generally, a wide-lens camera pro-
`duces images with a larger field of view than a tele-lens
`camera can, as the tele-lens camera has greater magnifica-
`tion. Field of view is a mechanical property of the camera
`(including the lens) and does not change when the camera
`is moved to a different location.
`
`
`2 Each imaging device in the camera system contains
`both a lens assembly and a sensor array. The field of view
`is determined by the lens assembly’s properties. For sim-
`plicity, we refer to the imaging devices in their entirety
`based on their lenses.
`
`

`

`Case: 22-1340 Document: 50 Page: 5 Filed: 10/16/2023
`
`5
`
`COREPHOTONICS, LTD. v. APPLE INC.
`
`
`Within a dual-aperture camera system, the wide-lens
`camera and the tele-lens camera are placed in different lo-
`cations (e.g., adjacent to one another) and, thus, capture
`images from slightly different perspectives. This results in
`the wide-lens and tele-lens cameras having different points
`of view. In this context, “point of view” refers to how the
`observable world appears (and thus how it can be captured)
`from a particular location; that is, the perspective a camera
`captures from a location. A lens’ point of view, therefore,
`changes when the camera’s location is changed.
`Consequently, when the dual-aperture camera system
`switches from the wide-lens camera to the tele-lens camera
`(or vice versa) while zooming in (or out), a user may see a
`“jump” or a discontinuous image change, because the tele
`lens and wide lens are in different locations and, thus, have
`different points of view. ’233 patent 10:32-34; ’898 patent
`7:42-44. The Challenged Patents teach minimizing this
`“jump” effect by partially “matching the position, scale,
`brightness and color of the output image before and after
`the transition” from one lens to the other. ’233 patent
`10:36-40; see also ’898 patent 7:46-50. In this regard, the
`patents explain that matching an entire image from one
`camera with an entire image from another camera is often
`impossible because the distance between an observed ob-
`ject and the two cameras will differ at least slightly. The
`patents teach that engaging in position matching only in
`the region of interest (“ROI”) may generate a “smooth tran-
`sition.” ’233 patent 10:43-46; see also ’898 patent 7:53-56.
`Within the portions of the field of view that are com-
`mon to both the tele-lens camera and the wide-lens camera,
`the tele-lens camera often, but not always, produces a
`clearer image. See, e.g., ’898 patent 10:15-19. Where this
`is untrue – for example, if the subject of a video is out of
`focus in the tele-lens image – “there is no point in perform-
`ing the transition [from wide-lens to tele-lens image] be-
`cause no . . . resolution[] is gained.” ’898 Patent 10:16-17.
`
`

`

`Case: 22-1340 Document: 50 Page: 6 Filed: 10/16/2023
`
`6
`
`COREPHOTONICS, LTD. v. APPLE INC.
`
`To account for such scenarios, the ’898 and ’332 patents
`teach not switching to the tele lens when the tele-lens cam-
`era’s “effective resolution” is lower than that of the wide
`lens. ’898 patent 10:2-7, 15-19. The patents explain that
`one way to implement the determination of when to engage
`in “no switching” is through calculating an “effective reso-
`lution score.” ’898 patent 6:16-24, 10:15-19.
`Claim 1 of the ’233 patent is illustrative of the claims
`in that patent, reciting:
`A multiple aperture zoom digital camera, compris-
`ing:
`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 sec-
`tion 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
`c) a camera controller operatively coupled to the
`Wide and Tele imaging sections and configured
`to reduce an image jump effect seen in video out-
`put images and to provide continuous zoom
`video output images by executing registration
`between the Wide and Tele images for perform-
`ing position matching to the video output images
`when switching from an output of the Tele im-
`aging section to an output of the Wide imaging
`section or vice versa.
`Claim 1 of the ’942 patent is illustrative of the claims
`in that patent and is similar to claim 1 of the ’233 patent,
`except that claim element c) in the ’942 patent recites:
`
`

`

`Case: 22-1340 Document: 50 Page: 7 Filed: 10/16/2023
`
`7
`
`COREPHOTONICS, LTD. v. APPLE INC.
`
`
`a camera controller operatively coupled to the Wide
`and Tele imaging sections and configured, when
`providing video output images, to:
`reduce an image jump effect seen in the video
`output images when switching from a Wide im-
`age to a Tele image by shifting the Tele image
`relative to the Wide image according to a dis-
`tance of an object in a Tele image region of inter-
`est (ROI), and/or
`reduce an image jump effect seen in the video
`output images when switching from a Tele im-
`age to a Wide image by shifting the Wide image
`relative to the Tele image according to a distance
`of an object in a Wide image ROI.
`Claim 1 of the ’898 patent is illustrative of the claims
`in the ’898 and ’332 patents:
`A zoom digital camera comprising:
`a) a Wide imaging section that includes a fixed
`focal length Wide lens with a Wide field of view
`(FOV) and a Wide sensor, the Wide imaging sec-
`tion operative to provide Wide image data of an
`object or scene;
`b) a Tele imaging section that includes a fixed
`focal length Tele lens with a Tele FOV that is
`narrower than the Wide FOV and a Tele sensor,
`the Tele imaging section operative to provide
`Tele image data of the object or scene; and
`c) a camera controller operatively coupled to the
`Wide and Tele imaging sections and configured
`to evaluate if a no-switching criterion is fulfilled
`or not fulfilled, wherein if the no-switching cri-
`terion is fulfilled in a zoom-in operation between
`a lower zoom factor (ZF) value and a higher ZF
`
`

`

`Case: 22-1340 Document: 50 Page: 8 Filed: 10/16/2023
`
`8
`
`COREPHOTONICS, LTD. v. APPLE INC.
`
`value at a zoom factor (ZF) higher than an up-
`transfer ZF, the camera controller is further con-
`figured to output a zoom video output image that
`includes only Wide image data, and wherein if
`the no-switching criterion is not fulfilled, the
`camera controller is further configured to output
`a zoom video output image that includes only
`transformed, digitally zoomed Tele image data.
`Claims 4 and 15 of the ’898 patent and claims 5 and 17
`of the ’332 patent (the “Effective Resolution Claims”) fur-
`ther include the “effective resolution” “no-switching crite-
`rion”
`limitation.
` Claim 4 of the
`’898 patent
`is
`representative of the Effective Resolution Claims:
`The camera of claim 1; wherein the no-switching
`criterion includes an effective resolution of the Tele
`image being lower than an effective resolution of
`the Wide image.
`
`B
`Two prior art references are part of all of the obvious-
`ness grounds Apple presented in its IPR petitions: Golan
`and Martin.
`Golan describes camera systems using multiple imag-
`ing sensors and lens assemblies to zoom without using a
`lens with a mechanically adjustable focal length. By
`providing “multiple imaging devices each with a different
`fixed field of view (FOV),” Golan’s system “facilitates a light
`weight electronic zoom with a large lossless zooming
`range.” J.A. 5525 (Golan ¶ 9). Specifically, Golan teaches
`digitally zooming with the wide lens until a higher resolu-
`tion image is fully capturable with the tele lens and then
`digitally zooming with that higher resolution tele-lens im-
`age. To prevent a discontinuity or “jump” from occurring
`when switching between images while zooming, Golan
`teaches a one-time calibration technique to correct for the
`lenses’ different points of view.
`
`

`

`Case: 22-1340 Document: 50 Page: 9 Filed: 10/16/2023
`
`9
`
`COREPHOTONICS, LTD. v. APPLE INC.
`
`
`Martin describes methods “for producing two-dimen-
`sional images that, upon display, can be perceived to be
`three-dimensional without the use of special viewing aids.”
`J.A. 5535 (Martin 1:17-20). Among other things, Martin
`teaches capturing images of the same scene from two dif-
`ferent points of view (that is, parallax images) and then
`displaying the images in an alternating fashion to the
`viewer to create the appearance of three-dimensionality.
`Martin further discloses “critically aligning” the images to
`create a stable three-dimensional image. This alignment
`process requires manipulating the captured images so that
`“a region of interest in [one] image . . . is positioned such
`that it occupies the same location within the frame of” an-
`other image. J.A. 5536 (Martin 4:33-35).
`Apple additionally relies on Japanese Patent Applica-
`tion No. JP2011-55246 (“Togo”) for the teaching of the “ef-
`fective resolution” “no-switching criterion” limitation in the
`Effective Resolution Claims.3 Togo explains that using a
`wide lens together with a tele lens to zoom can create prob-
`lems if the subject of the image is out of focus for one of the
`lenses. Typically, a tele lens is designed to have subjects
`that are far from the camera be in focus. This means that
`if the subject is close to the tele lens, the subject will be
`blurry. Togo teaches using a tele lens that is focused in the
`distance, but suggests not switching to it while zooming if
`the subject of the camera is sufficiently close.
`C
`Corephotonics filed suit against Apple alleging in-
`fringement of the Challenged Patents (among others). See
`Complaint, Corephotonics, Ltd. v. Apple, Inc., No. 3:17-cv-
`06457 (N.D. Cal Nov. 6, 2017). In response, Apple
`
`
`3 We rely on an English translation of Togo, the ac-
`curacy of which is not at issue in this appeal.
`
`

`

`Case: 22-1340 Document: 50 Page: 10 Filed: 10/16/2023
`
`10
`
`COREPHOTONICS, LTD. v. APPLE INC.
`
`petitioned for IPR on all claims (i.e., claims 1-18) of the ’233
`patent; claims 1, 4, 8-12, 15, and 19-20 of the ’898 patent;
`all claims (i.e., claims 1-25) of the ’942 patent; and claims
`1-2, 5, 9-14, 17, and 21-22 of the ’332 patent. Each of Ap-
`ple’s grounds for unpatentability relied on combining Go-
`lan and Martin along with other references. With the
`exception of Togo, these other references are not relevant
`to the issues raised on appeal. The Board instituted the
`IPRs and ultimately found all challenged claims of the
`Challenged Patents unpatentable as obvious over Apple’s
`combinations of prior art.
`Broadly, three of the Board’s conclusions are at issue
`on appeal. First, the Board found that both Golan and
`Martin are analogous prior art. Second, the Board con-
`strued “shifting the [t]ele image relative to the [w]ide im-
`age according to a distance of an object in a [t]ele image
`region of interest (ROI)” and “by shifting the [w]ide image
`relative to the [t]ele image according to a distance of an ob-
`ject in a [w]ide image ROI” in the ’942 patent to include
`translating or shifting images based on indirect measures
`of distance (rather than only direct measures). Based in
`part on this understanding of the “shifting” terms, the
`Board found that Martin discloses the “shifting” limitation
`of the challenged claims of the ’942 patent. Third, the
`Board rejected Corephotonics’ proposed construction of “ef-
`fective resolution” as “effective resolution score,” constru-
`ing it instead as “image quality including but not limited to
`blurriness and sharpness.” Based on this construction, the
`Board found that Togo taught the “effective resolution” “no-
`switching criterion” limitation contained in the “Effective
`Resolution Claims.”
`
`

`

`Case: 22-1340 Document: 50 Page: 11 Filed: 10/16/2023
`
`11
`
`COREPHOTONICS, LTD. v. APPLE INC.
`
`
`Corephotonics timely appealed.4
`II
`A
`We review Board decisions pursuant to the standards
`of the Administrative Procedure Act (“APA”), 5 U.S.C.
`§ 550 et seq. Under the APA, we “hold unlawful and set
`aside agency action . . . not in accordance with law [or] . . .
`without observance of procedure required by law.” 5 U.S.C.
`§ 706. Thus, in an appeal from an IPR, we review the
`Board’s legal determinations de novo and its factual find-
`ings for substantial evidence. See Almirall, LLC v. Amneal
`Pharms. LLC, 28 F.4th 265, 271 (Fed. Cir. 2022). Substan-
`tial evidence is “such relevant evidence as a reasonable
`mind might accept as adequate to support a conclusion.”
`Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).
`“[T]he possibility of drawing two inconsistent conclusions
`from the evidence does not prevent an administrative
`agency’s finding from being supported by substantial evi-
`dence.” Consolo v. Fed. Mar. Comm’n, 383 U.S. 607, 620
`(1966).
`Because IPRs are formal adjudications, the APA also
`requires that the parties to IPRs receive notice of argu-
`ments and evidence and have an opportunity to be heard
`with respect to them. See Genzyme Therapeutic Prods. Ltd.
`v. Biomarin Pharm. Inc., 825 F.3d 1360, 1365-66 (Fed. Cir.
`2016). “[F]air notice and an opportunity to respond” is re-
`quired in “all aspects of an IPR proceeding.” Nike, Inc. v.
`Adidas AG, 955 F.3d 45, 53 (Fed. Cir. 2020).
`
`
`jurisdiction under 35 U.S.C.
`4 The Board had
`jurisdiction under 28 U.S.C.
`§ 316(c).
` We have
`§ 1295(a)(4)(A) and 35 U.S.C. §§ 141(c), 319.
`
`

`

`Case: 22-1340 Document: 50 Page: 12 Filed: 10/16/2023
`
`12
`
`COREPHOTONICS, LTD. v. APPLE INC.
`
`IPR proceedings are creations of the America Invents
`Act (AIA), 35 U.S.C. § 311, and must also proceed according
`to the requirements set out by that statute. As the Su-
`preme Court has stated, in an IPR “the petitioner’s conten-
`tions, not the Director’s discretion, define the scope of the
`litigation all the way from institution through to conclu-
`sion.” SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1357 (2018);
`see also 35 U.S.C. § 312(a)(4). The IPR petition, thus, must
`provide an understandable explanation of the element-by-
`element specifics of the patentability challenges, including
`the identification of particular portions of prior art on
`which the petitioner is relying. See 35 U.S.C. § 312(a)(3);
`37 C.F.R. §§ 42.22(a)(2), 42.104(b)(3)-(4); Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1363-64 (Fed. Cir. 2016);
`Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359,
`1367 (Fed. Cir. 2015). “It is of the utmost importance that
`petitioners in the IPR proceedings adhere to the require-
`ment that the initial petition identify ‘with particularity’
`the ‘evidence that supports the grounds for the challenge
`to each claim.’” Intelligent Bio-Sys., Inc. v. Illumina Cam-
`bridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting
`35 U.S.C. § 312(a)(3)). “Unlike district court litigation –
`where parties have greater freedom to revise and develop
`their arguments over time and in response to newly discov-
`ered material – the expedited nature of IPRs bring with it
`an obligation for petitioners to make their case in their pe-
`tition to institute.” Id. Given these “strict . . . require-
`ments,” id., the Board is not permitted to entertain
`“[s]hifting arguments” but must, instead, reject any “en-
`tirely new theory of prima facie obviousness absent from
`the petition,” if the petitioner attempts to inject such a the-
`ory into the proceeding post-petition, Wasica Fin. GmbH v.
`Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017);
`see also Sirona Dental Sys. GmbH v. Institut Straumann
`AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (stating Board is
`not permitted “to deviate from the grounds in the petition
`and raise its own obviousness theory”); Koninklijke Philips
`N.V. v. Google LLC, 948 F.3d 1330, 1336 (Fed. Cir. 2020)
`
`

`

`Case: 22-1340 Document: 50 Page: 13 Filed: 10/16/2023
`
`13
`
`COREPHOTONICS, LTD. v. APPLE INC.
`
`
`(holding Board erred by raising its own obviousness theory
`based on combination of references not provided in peti-
`tion).
`The patent owner may file a preliminary patent owner
`response to a petition. See 37 C.F.R. § 42.107(a). Thereaf-
`ter, the Board makes a decision whether to institute the
`requested IPR, based on whether it finds, as a preliminary
`matter, a reasonable likelihood the petitioner will succeed.
`See 35 U.S.C. § 314. This institution decision is not review-
`able. See Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261,
`276 (2016) (“We therefore conclude that § 314(d) bars
`Cuozzo’s efforts to attack the Patent Office’s determination
`to institute inter partes review in this case.”). We may,
`however, “review determinations made during institution
`that are subsequently incorporated into the Board’s final
`written decision.” In re Magnum Oil Tools Int’l, Ltd., 829
`F.3d 1364, 1374 (Fed. Cir. 2016).
`After institution, the patent owner files a response, to
`which the petitioner then replies.
` See 37 C.F.R.
`§§ 42.23(b), 42.120(a). The petitioner’s “reply may only re-
`spond to arguments raised in the corresponding opposition,
`patent owner preliminary response, patent owner re-
`sponse, or decision on institution.” § 42.23(b). “[A]n IPR
`petitioner may not raise in reply an entirely new rationale
`for why a claim would have been obvious.” Henny Penny
`Corp. v. Frymaster LLC, 938 F.3d 1324, 1330-31 (Fed. Cir.
`2019) (internal quotation marks omitted). Any marked de-
`parture from the grounds identified with particularity in
`the petition would impose “unfair surprise” on the patent
`owner and, consequently, violate both the APA and the IPR
`statute. Arthrex Inc. v. Smith & Nephew, Inc., 935 F.3d
`1319, 1328 (Fed. Cir. 2019).
`It is for the Board to determine what grounds are being
`articulated in a petition and what arguments and evidence
`are being referred to in the responses and any replies. See,
`
`

`

`Case: 22-1340 Document: 50 Page: 14 Filed: 10/16/2023
`
`14
`
`COREPHOTONICS, LTD. v. APPLE INC.
`
`e.g., Yita LLC v. MacNeil IP LLC, 69 F.4th 1356, 1366 (Fed.
`Cir. 2023); Ariosa Diagnostics, 805 F.3d at 1368. In partic-
`ular, the Board has discretion to determine “whether a
`[p]etition identified the specific evidence relied on in a
`[r]eply and when a [r]eply contention crosses the line from
`the responsive to the new.” Ariosa, 805 F.3d at 1368. We
`review the Board’s assessments of what has been argued to
`and put before it in an IPR for abuse of discretion. See Yita,
`69 F.4th at 1366. The Board abuses its discretion when its
`decision “(1) is clearly unreasonable, arbitrary, or fanciful;
`(2) is based on an erroneous conclusion of law; (3) rests on
`clearly erroneous fact finding; or (4) involves a record that
`contains no evidence on which the Board could rationally
`base its decision.” Ericsson Inc. v. Intell. Ventures I LLC,
`901 F.3d 1374, 1379 (Fed. Cir. 2018).
`Following completion of all briefing and oral hearing,
`the petitioner must prove invalidity of any challenged
`claim by a preponderance of the evidence. See Magnum
`Oil, 829 F.3d at 1375 (citing 35 U.S.C. § 316(e)). This bur-
`den of persuasion remains with the petitioner at all times.
`See Sanofi-Aventis Deutschland GmbH v. Mylan Pharms.
`Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023). In evaluating
`whether the petitioner has met its burden, the Board must
`consider all evidence and argument properly submitted in
`connection with the petitioner’s reply, as well as all that is
`submitted in connection with the petition. See Magnum
`Oil, 829 F.3d at 1376 (“[The] fact finder must consider all
`evidence of obviousness and nonobviousness before reach-
`ing a determination.”). Once an issue is fairly presented in
`a petition and made the subject of dispute by the patent
`owner’s response, the Board is free to make its own factual
`findings grounded in the evidence presented to it, without
`being bound to choose between the specific positions the
`parties advocated. See Fanduel, Inc. v. Interactive Games
`LLC, 966 F.3d 1334, 1344 (Fed. Cir. 2020) (“[I]n every case,
`it remains the Board’s essential function to make factual
`findings based on its view of the record.”) (emphasis added).
`
`

`

`Case: 22-1340 Document: 50 Page: 15 Filed: 10/16/2023
`
`COREPHOTONICS, LTD. v. APPLE INC.
`
`
`
`15
`
`B
`A patent is invalid as obvious “if the differences be-
`tween the claimed invention and the prior art are such that
`the claimed invention as a whole would have been obvious
`before the effective filing date of the claimed invention to a
`person having ordinary skill in the art to which the claimed
`invention pertains.” 35 U.S.C. § 103 (2011).5 In determin-
`ing whether a claim is invalid as obvious, we compare the
`prior art to the claim language, and if necessary, after the
`claim language has been properly construed when the
`meaning or scope is in dispute. See U.S. Surgical Corp. v.
`Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). Claim
`construction based solely on intrinsic evidence is a question
`of law. See Teva Pharms. USA, Inc. v. Sandoz, Inc., 574
`U.S. 318, 331 (2015).
`“Obviousness is a legal question based on underlying
`findings of fact.” Fleming v. Cirrus Design Corp., 28 F.4th
`1214, 1221 (Fed. Cir. 2022). Among those issues of fact is
`what the prior art discloses to an ordinarily skilled artisan.
`See id. “What the prior art discloses and whether a person
`of ordinary skill would have been motivated to combine
`prior-art references are both fact questions that we review
`for substantial evidence.” Intel Corp. v. PACT XPP
`Schweiz AG, 61 F.4th 1373, 1378 (Fed. Cir. 2023); see also
`Bot M8 LLC v. Sony Interactive Ent. LLC, 66 F.4th 1380,
`1384 (Fed. Cir. 2023).
`Prior art references are applicable to the obviousness
`inquiry only when they are analogous to the claims being
`challenged. See In re Clay, 966 F.2d 656, 658 (Fed. Cir.
`
`
`5 The Challenged Patents have effective filing dates
`later than March 16, 2013. Therefore, we apply § 103 as
`amended by the Leahy-Smith America Invents Act. See 35
`U.S.C. § 100 note.
`
`

`

`Case: 22-1340 Document: 50 Page: 16 Filed: 10/16/2023
`
`16
`
`COREPHOTONICS, LTD. v. APPLE INC.
`
`1992); see also In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
`2004). Art that is “too remote” from the patents being at-
`tacked cannot be treated as prior art. In re Sovish, 769
`F.2d 738, 741 (Fed. Cir. 1985); see also In re Oetiker, 977
`F.2d 1443, 1447 (Fed. Cir. 1992) (“The combination of ele-
`ments from non-analogous sources, in a manner that recon-
`structs the applicant’s invention only with the benefit of
`hindsight, is insufficient to present a prima facie case of
`obviousness.”). We use “[t]wo separate tests [to] define the
`scope of analogous art: (1) whether the art is from the same
`field of endeavor, regardless of the problem addressed and,
`(2) if the reference is not within the field of the inventor’s
`endeavor, whether the reference still is reasonably perti-
`nent to the particular problem with which the inventor is
`involved.” Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374,
`1379 (Fed. Cir. 2019) (internal quotation marks omitted).
`“The Board’s determination that a prior art reference is
`analogous art . . . presents an issue of fact, reviewed for
`substantial evidence.” In re ICON Health & Fitness, Inc.,
`496 F.3d 1374, 1378 (Fed. Cir. 2007).
`“To satisfy its burden of proving obviousness, a peti-
`tioner cannot employ mere conclusory statements. The pe-
`tition must instead articulate specific reasoning, based on
`evidence of record, to support the legal conclusion of obvi-
`ousness.” Magnum Oil, 829 F.3d at 1380. It is not always
`necessary for a petition to expressly address analogous-
`ness. For instance, it may be clear from the petition’s de-
`scription of the references and the challenged claims that
`prior art is in the same field of endeavor as the challenged
`patent, or the pertinence of the prior art to the problem
`solved by the invention may be implicit in the petition’s dis-
`cussion of the challenged claims and why a person of ordi-
`nary skill would be motivated to combine the prior art
`references with a reasonable expectation of success.
`
`

`

`Case: 22-1340 Document: 50 Page: 17 Filed: 10/16/2023
`
`COREPHOTONICS, LTD. v. APPLE INC.
`
`
`
`17
`
`III
`Because it is central to the issues we must decide in
`this appeal, we carefully set out here what the parties and
`the Board said about the analogousness of Apple’s prior art
`references at each stage of the proceedings below.
`In its petitions, Apple said of Golan and Martin that
`these “references are analogous prior art and are in the
`same field of endeavor pertaining to imaging systems gen-
`erating video output images using two imaging sections
`having different points of view.” J.A. 1023-24 (emphasis
`added); see also J.A. 10023-24; No. 1455 J.A. 1024, 10023.
`Apple further explained that “Golan discloses providing
`continuous video output images using an image acquisition
`system ‘having multiple imaging devices’ having different
`points of view,” and “[s]imilarly, Martin discusses ‘display
`[of] alternating views of two or more parallax images’ from
`cameras having different points of view to ‘create a result-
`ant moving image.’” J.A. 1023-24 (second bracketing in
`original); see also J.A. 10023-24; No. 1455 J.A. 1024, 10023.
`Apple’s petitions were ambiguous; they did not make clear
`whether Apple 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.
`This ambiguity was present in the expert declaration
`Apple attached to each of its petitions. In the declaration,
`Dr. Frédo Durand opined:
`[T]he references are analogous prior art and are in
`the same field of endeavor pertaining to imaging
`systems generating video output images using im-
`ages from two imaging sections having different
`points of view . . . . [B]oth Golan and Martin dis-
`close imaging systems for generating video output
`
`

`

`Case: 22-1340 Document: 50 Page: 18 Filed: 10/16/2023
`
`18
`
`COREPHOTONICS, LTD. v. APPLE INC.
`
`images using two imaging sections having different
`points of view.
`J.A. 5410-11; see also J.A. 15457; No. 1455 J.A. 5462,
`15228. There is no express reference in either Apple’s pe-
`titions or attached expert declarations to the field of en-
`deavor of the Challenged Patents themselves. Nor is there
`any explicit contention that Golan and Martin are analo-
`gous because they are pertinent to the problem faced by the
`inventors of the Challenged Patents.
`Corephotonics did not call attention to these issues in
`its patent owner preliminary response. Instead, while
`Corephotonics opposed institution, and argued that the pe-
`tition failed to demonstrate a motivation to combine Golan
`and Martin, and more generally failed to establish the rea-
`sonable likelihood that Apple could make out a prima facie
`case of obviousness, Corephotonics did not specifically ar-
`gue that Apple’s analogous art contentions were in any way
`deficient. See Apple Inc. v. Corephotonics, Ltd., IPR2020-
`00860, Paper 6 at *10 (P.T.A.B. Aug. 6, 2020) (“The petition
`argues that Golan and Martin are ‘analogous prior art and
`are in the same field of endeavor’ . . . . Even if these argu-
`ments are accepted as true, they do not establish the nec-
`essary motivation to combine the two references.”).
`Unsurprisingly, then, in its instit