Corephotonics, Ltd. v. Apple, Inc., No. 22-1340 (Fed. Cir. 2023)
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Corephonics’s Challenged Patents relate to dual-aperture camera systems and disclose techniques for using the images from both lenses when zooming while capturing video. The Patent Trial and Appeal Board found claims of the Challenged Patents unpatentable as obvious (35 U.S.C. 103) in inter partes reviews initiated by Apple.
The Federal Circuit vacated, finding no procedural error in the Board’s handling of whether two prior references are analogous art. The Board’s handling of the analogous art issue neither markedly departed from the evidence and theories presented by the petition or institution decision nor unfairly surprised” Corephotonics. The Board’s determination that one of the references is analogous art is supported by substantial evidence; the reference is in the same field of endeavor as the Challenged Patents . The court remanded for the Board to explain why the other reference is (or is not) analogous art and how this finding affects its overall conclusion as to obviousness. The Board must decide whether it should consider Apple’s contention that, regardless of whether the reference is pertinent to the problem faced by the inventors, it is in the same field of endeavor as the Challenged Patents.
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