Case: 22-1350 Document: 42 Page: 1 Filed: 09/11/2023
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`
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`APPLE INC.,
`Appellant
`
`v.
`
`COREPHOTONICS, LTD.,
`Appellee
`______________________
`
`2022-1350, 2022-1351
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2020-
`00905, IPR2020-00906.
`______________________
`
`Decided: September 11, 2023
`______________________
`
`ELIZABETH MOULTON, Orrick, Herrington & Sutcliffe
`LLP, San Francisco, CA, argued for appellant. Also repre-
`sented by ALYSSA BARNARD-YANNI, EMILY VILLANO, New
`York, NY; MARK S. DAVIES, Washington, DC.
`
` MARC A. FENSTER, Russ August & Kabat, Los Angeles,
`CA, argued for appellee. Also represented by BRIAN DAVID
`LEDAHL, NEIL RUBIN, JAMES S. TSUEI.
` ______________________
`
`Before STOLL, LINN, and STARK, Circuit Judges.
`
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`APPLE INC. v. COREPHOTONICS, LTD.
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`STOLL, Circuit Judge.
`Apple Inc. appeals two final written decisions of the Pa-
`tent Trial and Appeal Board determining that Apple had
`not shown the challenged claims of Corephotonics, Ltd.’s
`U.S. Patent No. 10,225,479 were unpatentable as obvious.
`Because the intrinsic evidence supports a different con-
`struction than that adopted by the Board in its first deci-
`sion, and because the Board based its second decision on a
`ground not raised by any party in violation of the Adminis-
`trative Procedure Act (APA), we vacate and remand both
`final written decisions.
`BACKGROUND
`Corephotonics owns the ’479 patent, which is directed
`to creating “portrait photos.” ’479 patent col. 15 ll. 29–30.
`Specifically, the patent discloses “a thin (e.g., fitting in a
`cell phone) dual-aperture zoom digital camera” that com-
`bines images taken by a wide lens and a tele lens to create
`a fused still image. Id. at col. 3 ll. 18–23. The patent’s
`specification explains that the resulting fused image shows
`the “objects behind the subject [as] . . . very blurry.” Id.
`at col. 4 ll. 30–34. The patent describes that the fused im-
`age is created by incorporating “information from the out-
`of-focus blurred background in the Wide image” with “the
`original Tele image,” ultimately providing “a blurrier back-
`ground and even shallower” depth-of-field than the original
`tele image. Id. at col. 4 ll. 34–38, col. 9 ll. 58–60.
`Representative claim 1 reads as follows:
`1. A dual-aperture digital camera . . ., comprising:
`a) a Wide camera comprising a Wide lens
`and a Wide image sensor, the Wide camera
`having a respective field of view FOVW and
`being operative to provide a Wide image of
`the object or scene;
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`APPLE INC. v. COREPHOTONICS, LTD.
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`b) a Tele camera comprising a Tele lens
`and a Tele image sensor, the Tele camera
`having a respective field of view FOVT nar-
`rower than FOVW and being operative to
`provide a Tele image of the object or scene
`. . .;
`. . .
`e) a camera controller operatively coupled
`to the . . . Wide and Tele image sensors and
`configured to control the [autofocus] mech-
`anisms and to process the Wide and Tele
`images to create a fused image,
`wherein areas in the Tele image that are
`not focused are not combined with the Wide
`image to create the fused image and
`wherein the camera controller is further op-
`erative to output the fused image with a
`point of view (POV) of the Wide camera by
`mapping Tele image pixels to matching pix-
`els within the Wide image.
`Id. at col. 13 ll. 22–50 (emphasis added to disputed por-
`tion).
`Apple filed two petitions for inter partes review, each
`challenging various claims of the ’479 patent as obvious in
`view of multiple prior art references, including (as relevant
`on appeal) Parulski.1 Parulski discloses a “digital camera
`that uses multiple lenses and image sensors to provide an
`improved imaging capability.” Parulski col. 1 ll. 8–10. The
`Board issued a final written decision in both proceedings
`finding that Apple had not met its burden to show that the
`challenged claims were unpatentable. Apple, Inc. v. Core-
`photonics Ltd., No. IPR2020-00905, Paper 51, at 23
`
`1 U.S. Patent No. 7,859,588.
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`APPLE INC. v. COREPHOTONICS, LTD.
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`(P.T.A.B. Nov. 8, 2021) (’905 IPR Decision); Apple, Inc.
`v. Corephotonics Ltd., No. IPR2020-00906, Paper 54, at 14
`(P.T.A.B. Nov. 8, 2021) (’906 IPR Decision).
`I
`In the first proceeding, the parties disputed the con-
`struction of the claim term requiring a “fused image with a
`point of view (POV) of the Wide camera.” Specifically, the
`parties disputed what “a point of view (POV) of the Wide
`camera” requires. Both parties cited intrinsic evidence to
`support their arguments. Apple contended that, in view of
`the specification’s disclosure, the disputed claim term re-
`quired only that the fused image retain Wide perspective
`or Wide position POV, i.e., retain the shape of the Wide im-
`age (perspective POV) or the position of the Wide image
`(position POV). Corephotonics argued that the specifica-
`tion defined “point of view” such that the disputed limita-
`tion meant that the fused image must maintain both Wide
`perspective and Wide position POV.
`The Board described the specification’s disclosure re-
`garding this term as “not a model of clarity,” ’905 IPR De-
`cision at 11, but ultimately agreed with Corephotonics that
`“the [s]pecification equates a camera’s POV with how an
`object will appear in that camera’s image plane,” which in-
`cludes both the position and perspective points of view of
`an object. Id. Based on this construction, the Board found
`that Parulski only disclosed maintaining Wide position
`POV and therefore did not maintain “a point of view (POV)
`of the Wide camera” as construed. Id. at 21. Accordingly,
`the Board concluded that Parulski did not disclose this
`claim limitation and thus that Apple had not shown that
`the challenged claims were unpatentable.
`II
`In the second proceeding, Apple challenged claims 19–
`22 of the ’479 patent, which included many limitations re-
`lating to certain camera parameters, like track length,
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`focal length, and pixel size, among others. Independent
`claim 19 recites:
`19. A dual-aperture digital camera for imaging an
`object or scene, comprising:
`a) a Wide camera comprising a Wide lens
`and a Wide image sensor, the Wide camera
`having a respective field of view FOVW and
`being operative to provide a Wide image of
`the object or scene;
`b) a Tele camera comprising a Tele lens
`and a Tele image sensor, the Tele camera
`having a respective field of view FOVT nar-
`rower than FOVW and being operative to
`provide a Tele image of the object or scene,
`wherein the Tele lens has a respective ef-
`fective focal length EFLT and total track
`length TTLT
`fulfilling
`the condition
`EFLT/TTLT>1;
`c) a first autofocus (AF) mechanism cou-
`pled mechanically to, and used to perform
`an AF action on the Wide lens;
`d) a second AF mechanism coupled me-
`chanically to, and used to perform an AF
`action on the Tele lens, wherein the Wide
`and Tele lenses have different F numbers
`F#Wide and F#Tele, wherein the Wide and
`Tele image sensors have pixels with respec-
`tive pixel sizes Pixel sizeWide and Pixel
`sizeTele wherein Pixel sizeWide is not equal
`to Pixel sizeTele, and wherein the Tele cam-
`era has a Tele camera depth of field (DOFT)
`shallower than a DOF of the Wide camera
`(DOFW); and
`e) a camera controller operatively coupled
`to the first and second AF mechanisms and
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`APPLE INC. v. COREPHOTONICS, LTD.
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`to the Wide and Tele image sensors and
`configured to control the AF mechanisms,
`to process the Wide and Tele images to find
`translations between matching points in
`the images to calculate depth information
`and to create a fused image suited for por-
`trait photos, the fused image having a DOF
`shallower than DOFT and having a blurred
`background.
`’479 patent col. 14 l. 66–col. 15 l. 33.
`Apple contended that a combination of Parulski and
`Ogata2 (and other references not relevant on appeal) would
`render these claims obvious. Ogata discloses a “wide-angle
`photographic lens system,” and includes multiple charts
`listing specific data of the lens components of its preferred
`embodiments. Ogata col. 7 l. 29–col. 11 l. 59. Apple pro-
`posed in its petition that the skilled artisan would combine
`Parulski—which discloses a dual-aperture lens system
`without specifics about its lens parameters—with Ogata—
`which discloses specific data about lens parameters. Alt-
`hough Parulski and Ogata disclose differently sized lenses,
`Apple argued that the skilled artisan would have scaled the
`lens of Ogata down by a factor of about 6 to meet the size
`disclosed by Parulski. And if the artisan did so, the result-
`ing scaled lens would purportedly have the characteristics
`required by claims 19–22.
`Corephotonics’ Patent Owner Response pointed out an
`alleged problem with Apple’s theory. Apple relied on the
`declaration of its expert Dr. Sasián—and he made a typo-
`graphical error in his declaration. Specifically, Dr. Sasián
`used a program called Zemax to calculate the resulting lens
`characteristics for Ogata’s lens were it scaled down as Ap-
`ple suggested in its petition. But when he entered the lens
`
`
`2 U.S. Patent No. 5,546,236.
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`data into Zemax, Dr. Sasián inadvertently entered the
`wrong Abbe number3 for the third lens element. ’906 IPR
`Decision at 15 (identifying that Dr. Sasián entered the
`Abbe number as 26.5, instead of 42.72 as disclosed by
`Ogata); also compare J.A. 2733, Fig. 3C (Dr. Sasián’s “Pre-
`scription Data” spreadsheet listing Abbe number for third
`lens element as 26.5), with Ogata col. 7 ll. 45 (listing same
`Abbe number (v3) as 42.72).
`Corephotonics briefly noted—in the Background sec-
`tion of its Patent Owner Response—that, “[b]ecause of this
`error, Dr. Sasián’s field curvature, distortion and OPD fan
`plots . . . do not accurately reflect the performance of a
`scaled version of Ogata’s” lens. Apple, Inc. v. Corephotonics
`Ltd., No. IPR2020-00906, Paper 15, at 31 (P.T.A.B. Feb. 4,
`2021). Corephotonics did not mention this error again. It
`did not, for example, mention this typographical error at
`any point in its argument regarding obviousness or allege
`that this error altered whether the prior art combination
`discloses any of the claimed lens parameters. See generally
`id. at 36–68. Instead, Corephotonics used the remainder of
`its Response to argue that the proposed scaling of Ogata
`would create a “miniature” lens that would “dramatically
`alter the practicality of manufacturing the design” and
`would also impact “performance characteristics.” Id. at 41;
`see also J.A. 4803 (Corephotonics’ expert Dr. Moore opining
`that the proposed combination would not work because
`“scaling a good conventional lens design to a smaller size
`will often produce a design that is substantially inferior”).
`In its Reply, Apple did not respond to Corephotonics’ brief
`mention of Dr. Sasián’s typographical error. Instead, Ap-
`ple argued that scaling Ogata’s lens down by the proposed
`factor would not cause issues with manufacturing or per-
`formance, distinguishing Corephotonics’ arguments by
`
`
`3 An Abbe number of a transparent material is an
`approximate measure of the material’s dispersion.
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`APPLE INC. v. COREPHOTONICS, LTD.
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`noting that the proposed lens would not be “miniature” at
`all. Apple, Inc. v. Corephotonics Ltd., No. IPR2020-00906,
`Paper 23, at 6–7 (P.T.A.B. May 7, 2021).
`The Board then issued its final written decision, which
`focused not on the manufacturing and scalability argu-
`ments raised by the parties but instead on Dr. Sasián’s ty-
`pographical error.
`
`IPR Decision at 13–17.
`’906
`Specifically, the Board found there were “[a] few inconsist-
`encies between” Ogata and the data in Dr. Sasián’s decla-
`ration. Id. at 15. Besides the error mentioned by
`Corephotonics, the Board also purported to identify addi-
`tional errors in Dr. Sasián’s declaration regarding “the
`data for the fourth and tenth aspherical surfaces.” Id. Be-
`cause of these errors—both the Abbe number error identi-
`fied by Corephotonics and additional errors identified for
`the first time by the Board in its decision—the Board found
`that Apple had not met its burden to show that the chal-
`lenged claims were unpatentable. Id. at 17 (“[T]he opinion
`of a person skilled in the art will be only as reliable as the
`lens design software analysis that person performed, which
`will be only as reliable as the data used to perform that
`analysis.”).
`Apple appeals from both final written decisions. We
`have jurisdiction under 35 U.S.C. § 1295(a)(4)(A).
`DISCUSSION
`On appeal, Apple argues that the Board improperly
`construed the claim term “fused image with a point of view
`of the Wide camera” in its final written decision in the first
`IPR and that the Board’s conclusion regarding Dr. Sasián’s
`declaration in the second IPR was a new argument raised
`without notice to Apple in violation of the APA. We address
`the issues in each proceeding in turn.
`I
`We turn first to Apple’s claim construction argument
`regarding the first IPR. This case presents a close issue of
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`claim construction. The question is whether the contested
`claim term requiring the fused image to have “a point of
`view of the Wide camera” means that the fused image must
`maintain only Wide position POV or Wide perspective POV
`(as Apple contends) or whether it means that the fused im-
`age must maintain both (as Corephotonics contends and
`the Board found). The parties and the Board each cite only
`the patent’s intrinsic evidence, making this a question of
`law that we review de novo. Intel Corp. v. Qualcomm Inc.,
`21 F.4th 801, 808 (Fed. Cir. 2021).
`We begin, as we often do, with the claim language.
`Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir.
`2005) (“[T]he context in which a term is used in the as-
`serted claim can be highly instructive.”). Here, the claim
`term at issue reads in context: “wherein the camera con-
`troller is further operative to output the fused image with
`a point of view (POV) of the Wide camera by mapping Tele
`image pixels to matching pixels within the Wide image.”
`’479 patent col. 13 ll. 46–50. The claim does not mention
`position or perspective; instead, the claim states only that
`the resulting fused image retains “a point of view (POV) of
`the Wide camera,” without specifying what “point of view”
`it refers to. The claim does refer to “a” point of view instead
`of “the” point of view, which, as discussed below, we find
`informative. The language following the claim term clari-
`fies that the fused image is accomplished by “mapping Tele
`image pixels to matching pixels within the Wide image.”
`But this language does not clearly counsel as to the mean-
`ing of point of view. For example, it does not specify which
`or how many pixels of the Tele image are mapped, leaving
`it unclear whether the resulting image maintains the Wide
`image’s perspective, position, or both.
`As we have observed, however, “[t]he claims . . . do not
`stand alone.” Phillips, 415 F.3d at 1315. We thus turn to
`the patent’s specification for help. As the Board observed,
`the specification is “not a model of clarity.” ’905 IPR Deci-
`sion at 11. Nevertheless, it provides some useful insight
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`into the claim term’s meaning. Before us, as they did be-
`fore the Board, both parties cite to a portion of the specifi-
`cation describing point of view:
`In a dual-aperture camera image plane, as seen by
`each sub-camera (and respective image sensor), a
`given object will be shifted and have different per-
`spective (shape). This is referred to as point-of-
`view (POV). The system output image can have the
`shape and position of either sub-camera image or
`the shape or position of a combination thereof. If
`the output image retains the Wide image shape
`then it has the Wide perspective POV. If it retains
`the Wide camera position then it has the Wide po-
`sition POV. The same applies to Tele images posi-
`tion and perspective. As used in this description,
`the perspective POV may be of the Wide or Tele
`sub-cameras, while the position POV may shift con-
`tinuously between the Wide and Tele sub-cameras.
`In fused images, it is possible to register Tele image
`pixels to a matching pixel set within the Wide im-
`age pixels, in which case the output image will re-
`tain the Wide POV.
`’479 patent col. 5 ll. 10–26. This passage begins by explain-
`ing the general concept of “point-of-view (POV),” then ex-
`plains the concepts of “Wide perspective POV” and “Wide
`position POV,” as well as their Tele counterparts.
`The first few sentences of this disclosure appear to con-
`template what the patent means by “point of view.” After
`describing that a given object “will be shifted [(position)]
`and have different perspective (shape),” the patent ex-
`plains that “[t]his is referred to as point-of-view.” Id.
`at col. 5 ll. 10–13. Accordingly, this portion of the disclo-
`sure is suggestive of an effort by the patentee to be its own
`lexicographer and describe “point of view” as something
`that includes both an object’s position and perspective.
`Phillips, 415 F.3d at 1316 (“[T]he specification may reveal
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`a special definition given to a claim term by the patentee
`that differs from the meaning it would otherwise pos-
`sess. . . . [T]he inventor’s lexicography governs.”) (citing
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
`(Fed. Cir. 2002)). On its own, this passage would seem to
`support Corephotonics’ and the Board’s interpretation of
`the challenged claim term.
`That said, the claim does not require that the fused im-
`age maintain “the Wide camera’s point of view.” Instead,
`it specifically states that that fused image must maintain
`“a point of view of the Wide camera.” ’479 patent col. 13
`l. 48 (emphasis added). A reasonable reading of the full
`passage from the specification reproduced above is that
`Wide perspective and Wide position are two different types
`of Wide point of view. The claim term requires only that
`the fused image maintain “a point of view of the Wide cam-
`era,” i.e., only one of the disclosed types of Wide point of
`view. See Salazar v. AT&T Mobility LLC, 64 F.4th 1311,
`1315 (Fed. Cir. 2023) (“We have explained that the indefi-
`nite article ‘a’ means ‘one or more.’”). In this case, the in-
`ventor took pains in the specification to describe different
`types of point of view—Wide position, Wide perspective,
`Tele position, and Tele perspective—but intentionally
`chose to claim only “a point of view of the Wide camera.”
`And there is no indication in the claims, specification, or
`otherwise that the patentee meant to claim their invention
`more narrowly. See, e.g., Convolve, Inc. v. Compaq Com-
`put. Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016) (“[A]bsent
`a clear intent in the claims themselves, the specification,
`or the prosecution history, we interpret ‘a processor’ to
`mean ‘one or more processors.’”).
`Indeed, the specification discloses embodiments where
`the fused image has a mixed point of view. The above pas-
`sage explains that in certain embodiments, the resulting
`fused image’s “perspective POV may be of the Wide or Tele
`sub-cameras, while the position POV may shift continu-
`ously between the Wide and Tele sub-cameras.” ’479
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`patent col. 5 ll. 20–23. In other words, the specification dis-
`closes embodiments where the fused image has any combi-
`nation of a Wide or Tele perspective POV and a Wide or
`Tele position POV. For example, the fused image may have
`a Tele perspective POV and a Wide position POV, or per-
`haps a Wide perspective POV and a Tele position POV.
`Our caselaw counsels against interpreting the claims in a
`way that would omit a disclosed embodiment absent clear
`evidence to the contrary. Sequoia Tech., LLC v. Dell, Inc.,
`66 F.4th 1317, 1327 (Fed. Cir. 2023) (“[W]e also recognize
`that ‘a claim construction excluding a preferred embodi-
`ment is rarely, if ever correct.’”) (quoting Kaufman v. Mi-
`crosoft Corp., 34 F.4th 1360, 1372 (Fed. Cir. 2022))
`(cleaned up). Here, Corephotonics’ proposed construc-
`tion—requiring the fused image to have Wide perspective
`and Wide position POV—would exclude various embodi-
`ments disclosed by the specification.
`We acknowledge that neither the claim language nor
`the specification presents a cut-and-dry case of claim con-
`struction regarding this claim term. Taken together and
`in context, however, the intrinsic evidence supports that
`the claim term requiring a fused image maintaining “a
`point of view of the Wide camera” requires only that the
`fused image maintain Wide perspective point of view or
`Wide position point of view, but does not require both. Be-
`cause we ultimately conclude that Apple’s proposed con-
`struction is more in line with the intrinsic evidence, we do
`not adopt the Board’s construction of “fused image with a
`point of view of the Wide camera.” Accordingly, we vacate
`and remand the Board’s final written decision in the first
`IPR for further proceedings in view of this claim construc-
`tion. See, e.g., Kaken Pharm. Co., Ltd. v. Iancu, 952 F.3d
`1346, 1355 (Fed. Cir. 2020) (“[T]he appropriate course in
`this case, as in so many other involving a reversal of a
`Board claim construction, is to vacate the Board’s decision
`and remand the matter.”).
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`II
`We now turn to the second final written decision. In
`the ’906 IPR, the Board based its decision almost entirely
`on its determination that the declaration submitted by Ap-
`ple’s expert, Dr. Sasián, was unreliable because of a typo-
`graphical error he made regarding the lens data. Apple
`challenges this decision as violative of the APA.
`The APA imposes important limits on the Board’s au-
`thority during inter partes reviews. Under the APA, “[p]er-
`sons entitled to notice of an agency hearing shall be timely
`informed of . . . the matters of fact and law asserted,”
`5 U.S.C. § 554(b)(3), and the Board “shall give all inter-
`ested parties opportunity for . . . the submission and con-
`sideration of facts [and] arguments,” id. § 554(c)(1). In
`other words, “the Board must base its decision on argu-
`ments that were advanced by a party, and to which the op-
`posing party was given a chance to respond.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381
`(Fed. Cir. 2016).
`In Magnum Oil, we reversed the Board’s final written
`decision that held all challenged claims were unpatentable
`as obvious. Id. The Board had determined that the chal-
`lenged claims would have been obvious in view of a combi-
`nation of prior art that differed from that asserted in the
`petition, id. at 1377, a combination that the petitioner had
`made only conclusory statements to support, id. at 1380.
`We held that, under the APA, the Board erred in adopting
`an argument that the petitioner had not sufficiently made.
`Id. at 1381; see also, e.g., Nike, Inc. v. Adidas AG, 955 F.3d
`45, 53 (Fed. Cir. 2020) (if raising an issue sua sponte, the
`Board must “give[] the parties notice and an opportunity to
`respond”).
`Our decision in Power Integrations, Inc. v. Lee is simi-
`larly instructive. 797 F.3d 1318 (Fed. Cir. 2015). There,
`the Board spent a “significant portion of [its] decision” as-
`sessing the proper construction of a claim term that the
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`parties did not dispute. Id. at 1325. We determined that
`because so much of the “[B]oard’s analysis is focused on a
`red herring,” it “failed to straightforwardly and thoroughly
`assess the critical issue” outlined by the parties and de-
`prived the parties of an opportunity to respond to the
`Board’s claim construction. Id. This, we explained, was a
`violation of the APA.
`In this case, the Board focused almost entirely on the
`typographical error in Dr. Sasián’s expert declaration, de-
`termining that the Abbe number error (among others that
`the Board identified sua sponte in its final written decision)
`meant that Apple had not met its burden to show the chal-
`lenged claims were unpatentable. ’906 IPR Decision at 15–
`17. Certainly, the Board is entitled to set aside technical
`expert testimony that it finds not scientifically reliable on
`the record. See, e.g., Granite Constr. Co. v. United States,
`962 F.2d 998, 1006 (Fed. Cir. 1992) (recognizing the Board
`“may reject even uncontroverted expert testimony when it
`is intrinsically unpersuasive”); see also TQ Delta, LLC
`v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019)
`(“[C]onclusory expert testimony is inadequate to support
`an obviousness determination.”). The Board is also of
`course free to make credibility determinations, weigh the
`evidence, and decide for itself what persuades it. See Re-
`gents of the Univ. of Minn. v. Gilead Scis., Inc., 61 F.4th
`1350, 1359 (Fed. Cir. 2023) (“It is within the discretion of
`the Board to weigh the evidence of record.”); Yorkey
`v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (“We defer to
`the Board’s findings concerning the credibility of expert
`witnesses.”). But its explanations must be supported by
`substantial evidence, and its decisions must be reached
`only after the parties have been provided fair notice and an
`opportunity to be heard. TQ Delta, 942 F.3d at 1358
`(“[T]he Board is obligated to ‘provide an administrative rec-
`ord showing the evidence on which the findings are based,
`accompanied by the agency’s reasoning in reaching its
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`Case: 22-1350 Document: 42 Page: 15 Filed: 09/11/2023
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`APPLE INC. v. COREPHOTONICS, LTD.
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`15
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`conclusions.’”) (quoting In re Lee, 277 F.3d 1338, 1342
`(Fed. Cir. 2002)).
`Here, the Board found that Apple failed to show there
`would have been a reasonable expectation of success in
`making its proposed prior art combination because of er-
`rors in Dr. Sasián’s expert declaration that neither party
`asserted were material to the claimed invention—and only
`one of which Corephotonics even identified as an error.
`’906 IPR Decision at 19 (“For the reasons discussed above,
`we find Petitioner has failed to muster sufficient evidence
`to demonstrate . . . that Ogata’s lens could have been scaled
`to work in Parulski’s camera with a reasonable expectation
`of success.”). The main error relied on by the Board in its
`final written decision is the Abbe number error, an error
`Corephotonics mentioned in passing only once in the Back-
`ground section of its Response. Patent Owner’s Resp. at
`31, Apple, Inc. v. Corephotonics Ltd., No. IPR2020-00905,
`Paper 15 (P.T.A.B. Feb. 4, 2021). Corephotonics did not
`mention the error again. See generally id. at 36–68. It did
`not rely on this error in any of its arguments on the merits.
`And it did not contend that this error demonstrated that
`there would have been no reasonable expectation of success
`or that it alone was a sufficient basis to find all of Dr. Sas-
`ián’s analysis unreliable. Nor could it—the Abbe number
`is neither recited in the challenged claims nor does the rec-
`ord contain any evidence that it impacts any lens parame-
`ter that is recited in the challenged claims. See ’479 patent
`col. 14 l. 66–col. 15 l. 48 (claims 19–22). Corephotonics’ ex-
`pert explained that the error would only impact the calcu-
`lations for “field curvature, distortion, and OPD fan plots,”
`items that are similarly neither claimed nor impact param-
`eters that are. J.A. 4798 ¶ 62. In fact, data regarding “field
`curvature, distortion, and OPD fan plots” appears nowhere
`in Dr. Sasián’s declaration, illustrating its lack of rele-
`vance to the issues argued by the parties.
`The Board failed to provide a reasoned explanation for
`why it found the Abbe number error meaningful. All it said
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`Case: 22-1350 Document: 42 Page: 16 Filed: 09/11/2023
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`16
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`APPLE INC. v. COREPHOTONICS, LTD.
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`was that “the opinion of a person skilled in the art will be
`only as reliable as the lens design software analysis that
`person performed, which will be only as reliable as the data
`used to perform that analysis.” ’906 IPR Decision at 13–
`17. But we are not able to discern from the Board’s decision
`why Dr. Sasián’s typographical error may have rendered
`unreliable the portions of Dr. Sasián’s analysis relevant to
`the obviousness grounds at issue.
`The parties’ arguments regarding obviousness, and
`specifically whether there would have been a reasonable
`expectation of success in combining Parulski and Ogata, fo-
`cused entirely on questions of manufacturability and scala-
`bility. The single typographical error made by Dr. Sasián,
`on the other hand, was never identified by the parties as a
`dispositive issue, the resolution of which renders it unnec-
`essary also to resolve the parties’ disputes regarding man-
`ufacturing and scalability.
` Further, the additional
`“inconsistencies” identified by the Board—purported mis-
`takes regarding “aspherical surface” data, ’906 IPR Deci-
`sion at 15—were never mentioned by the parties. Indeed,
`both parties appear to agree these “inconsistencies” were
`not even errors in the first place. Appellant’s Br. 65–67;
`Appellee’s Br. 45–46.
`On this record, the Board’s determination that the ty-
`pographical error in Dr. Sasián’s declaration was essen-
`tially dispositive of the issues in the case does not comport
`with the notice requirements of the APA. Apple (and Core-
`photonics, for that matter) had no reason to anticipate that
`the typographical error would be the basis for the Board’s
`decision, given that the parties did not brief, argue, or even
`suggest this error was dispositive or would impact the
`claimed lens parameters. See Magnum Oil, 829 F.3d
`at 1381 (“[T]he Board must base its decision on arguments
`that were advanced by a party, and to which the opposing
`party was given a chance to respond.”). Said otherwise, as
`in Power Integrations, the Board spent a “significant por-
`tion of [its] opinion” assessing an issue that no party
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`Case: 22-1350 Document: 42 Page: 17 Filed: 09/11/2023
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`APPLE INC. v. COREPHOTONICS, LTD.
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`meaningfully raised or asserted was relevant. 797 F.3d
`at 1325. And because the Board’s analysis was focused on
`this issue, it failed to “thoroughly assess the critical issue”
`outlined by the parties, i.e., whether there would have been
`a reasonable expectation of success in combining Parulski
`and Ogata, considering manufacturing and scalability con-
`cerns. Because the Board based its decision on a typo-
`graphical error without sufficiently explaining
`its
`significance, made sua sponte findings that lacked substan-
`tial evidence, and did not resolve the issue the parties pre-
`sented, we vacate the Board’s final written decision and
`remand for further proceedings that meet the APA’s re-
`quirements for notice and the opportunity to respond.
`CONCLUSION
`We have considered the parties’ remaining arguments
`but do not find them persuasive. For the foregoing reasons,
`we vacate the Board’s final written decisions and remand
`for further proceedings consistent with this opinion.
`VACATED AND REMANDED
`COSTS
`
`Costs to Apple.
`
`
`
`