Wednesday, June 23, 2021

In Apple v. Corephotonics, the CAFC finds PTAB relied upon " a clear mathematical error "

Of the issue of error, relevant to the obviousness portion of the case:

Obviousness is a question of law based on underlying fact findings that we review for substantial evidence, including “whether a [person of ordinary skill in the art] would have been motivated to combine the prior art to achieve the claimed invention and whether there would have been a reasonable expectation of success in doing so.” TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1357 (Fed. Cir. 2019) (quoting In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016)).

Our review of the Board’s decision is under the standard set forth in the Administrative Procedure Act, which “requires us to set aside conclusions or findings that are ‘arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law,’ or ‘unsupported by substantial evidence.’” Alacritech, Inc. v. Intel Corp., 966 F.3d 1367, 1370 (Fed. Cir. 2020) (quoting 5 U.S.C. §§ 706(2)(A), (E)). As a part of this review, “the Board is obligated to ‘provide an administrative record showing the evidence on which the findings are based, accompanied by the agency’s reasoning in reaching its conclusions.’” TQ Delta, 942 F.3d at 1358 (quoting In re Lee, 277 F.3d 1338, 1342 (Fed. Cir. 2002)). Where the Board’s decision is based on multiple alternative grounds, “we will uphold a decision of less than ideal clarity if the [Board’s] path may reasonably be discerned,” Japanese Found. for Cancer Rsch. v. Lee, 773 F.3d 1300, 1308 (Fed. Cir. 2014) (quoting Bowman Transp., Inc. v. Ark-Best Freight Sys., Inc., 419 U.S. 281, 285–86 (1974)), for example, if “at least one of [the] multiple grounds is valid and the [Board] would have acted on that ground even if others were unavailable.” Japanese Found., 773 F.3d at 1308 (citing Casino Airlines, Inc. v. Nat’l Transp. Safety Bd., 439 F.3d 715, 717 (D.C. Cir. 2006)).

Apple presented evidence to the Board that a skilled artisan would have reduced the F number of Konno’s telephoto lens EX2-LN2 from 4.0 to 2.8, as taught by Bareau, “‘to conform to modern cellphone camera lens specifications.’” Final Decision, 2019 WL 6999883, at *11 (quoting J.A. 122). The Board rejected Apple’s arguments, finding that Apple’s “rationale for combining Konno and Bareau is not supported by sufficient rational underpinning.” Id. at *12. Specifically, the Board found that, in the combination proposed by Apple, FNOm—from Konno’s telephoto lens EX2-LN2—“is lowered to 2.8, based on the teachings of Bareau,” which “fail[s] to satisfy Konno’s conditional expression (5).” Id. This finding is incorrect. Konno’s conditional expression (5) requires that the ratio of the F number for Konno’s wide-angle lens to the telephoto lens be within a certain range, “[d]esirably” between 0.6 and 1.3. J.A. 831 ¶ 37. As Apple explained in its opening brief, if the F number of Konno’s telephoto lens EX2-LN2 is decreased from 4.0 to 2.8, as taught by Bareau, the ratio of the F number for the wide-angle lens (3.0) to the telephoto lens in the modified Konno-Bareau lens assembly (2.8) would be 1.07, which, contrary to the Board’s finding, satisfies Konno’s conditional expression (5). Appellant’s Br. 56

Based on the decision before us, we are “unable to conclude that [the Board] would have reached the same decision absent its [mathematical] mistake[].” Hermes Consol., LLC v. E.P.A., 787 F.3d 568, 571 (D.C. Cir. 2015). As an initial matter, this is not a situation where we can reasonably discern that the Board was relying on multiple, independent grounds to support its finding. For instance, the Board explained that it was “not persuaded that the ordinarily skilled artisan would have looked to lower the FNOm value of Konno’s telephoto lens assembly based on Bareau’s teachings of a general preference to lower the F number in cellphone cameras with wide-angle lens assemblies.” Final Decision, 2019 WL 6999883, at *12. The Board also concluded that Apple failed to explain why a skilled artisan “would disregard Konno’s own intrinsic teaching of a lower F number (i.e., for a wide-angle lens assembly) and look to another reference, Bareau, also concerning wide-angle lens assemblies, to lower the F number of Konno’s telephoto lens assembly.” Id. (emphasis omitted). Thus, it is not clear if the basis for the Board’s decision is premised on the fact that Bareau’s teachings are limited to wide-angle lens assemblies, whereas Apple sought to modify Konno’s telephoto lens assembly, or its view that modifying Konno in view of Bareau would require disregarding Konno’s own intrinsic teaching. Nor can we discern from the Board’s decision whether the “intrinsic teaching” it was referring to was: (1) Konno’s conditional expression; (2) Konno’s statement that “‘it is advantageous to make the second imaging optical system darker than the first imaging optical system,’” id. (quoting J.A. 831 ¶ 38 (emphasis omitted)), i.e., by increasing the F number of the second optical imaging system (here, the telephoto lens EX2-LN2) compared to the first; or (3) both. We therefore vacate the Board’s determination that claims 6 and 14 would not have been obvious in view of Konno and Bareau, and remand to the Board for reconsideration.

CURIOUSLY the portion of the case LOST by Apple also hinged on error.

Here, Apple admits that Konno’s telephoto lens EX2-LN2—the sole embodiment that it relies on for anticipation—contains an error, specifically that lens elements L4 and L5 overlap. The Board found that “lens L4 and L5 of Konno’s lens assembly ‘cannot be arranged’ to provide ‘[a] lens assembly . . . [that] has an effective focal length (EFL), a total track length (TTL) of 6.5 millimeters or less’ as claimed without removing the overlap between lens L4 and L5.” Final Decision, 2019 WL 6999883, at *10 (alterations in original). As such, the Board found that Konno could not anticipate the challenged claims absent impermissible modification. See id. We discern no error with this conclusion. As the Board correctly noted, “[p]rior art that must be modified to meet the disputed claim limitation does not anticipate the claim.” Id. at *9 (quoting Enplas Display Device Corp. v. Seoul Semiconductor Co., 909 F.3d 398, 405 (Fed. Cir. 2008)). Such modifications are permissible only in an obviousness analysis.

Although Apple is correct that the EX2-LN2 embodiment meets the numerical requirements of the claims absent modification, the problem is that the relied upon embodiment is inoperative unless the overlap between lenses L4 and L5 is fixed. Under our precedent, such inoperative embodiments cannot be anticipatory. See In re Dowty, 118 F.2d 363, 366 (C.C.P.A. 1941) (“‘[A]n inoperative prior art device may not be relied upon as an anticipation.’” (quoting In re Kehl, 101 F.2d 193, 195 (C.C.P.A. 1939))).We therefore conclude that Konno’s inoperative telephoto lens EX2-LN2 cannot anticipate the challenged claims.


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