Monday, October 25, 2021

Corephotonics loses to Apple at CAFC

The outcome

Besides raising challenges to the merits of the Board’s decision, Corephotonics presented a challenge under the Appointments Clause of the Constitution, Art. II, § 2. After the Supreme Court resolved a similar constitutional challenge in United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021), we remanded this matter, while retaining jurisdiction, to give the Acting Director of the PTO the opportunity to consider reviewing the Board decision (an opportunity Corephotonics indicated it wanted). The Acting Director has now declined to review the Board decision, and Corephotonics has informed us that it does not challenge the Acting Director’s denial of review, but seeks only our review of the Board’s decision. We proceed to address Corephotonics’s challenges to the merits of that decision. We affirm.

As to anticipation

For a reference to anticipate a claim under 35 U.S.C. § 102, “each claim element must be disclosed, either expressly or inherently, in a single prior art reference, and the claimed arrangement or combination of those elements must also be disclosed, either expressly or inherently, in that same prior art reference.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332–33 (Fed. Cir. 2010). Here, the anticipation issue comes down to whether Ogino teaches a lens assembly in which the cover glass is omitted and the resulting total track length is 4.387 mm (the TL number in Table 11). If it does, that number is undisputedly less than the effective focal length (4.428 mm), satisfying the claim 1 requirement of TTL/EFL < 1.0—the only contested issue now regarding anticipation of claims 1 and 13.

As to teaching away

Further, despite language in Ogino explaining that the rationale for using a biconcave second lens element is to reduce track length, Ogino, col. 7, lines 39–42, nothing in Ogino “would have the effect of discrediting or discouraging the use of a meniscus shaped lens.” Board Decision, 2019 Patent App. LEXIS 13253, at *38–40; see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed . . . .”).


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