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Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1631.OPINION.9-12-2023_2188913.pdf"><em>Apple Inc. v. Corephotonics, Ltd.</em>, Nos. 2022-1350, -1351 (Sept. 11, 2023)</a>, vacating and remanding two final written decisions of the Patent Trial and Appeal Board holding Apple had not shown the challenged claims of U.S. Patent No. 10,225,479 were unpatentable as obvious.

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Corephotonics owns the ’479 patent, which is directed to the creation of “portrait photos” using a cellphone-sized digital camera by combining images taken by a wide lens and a tele lens to create a fused still image. Apple filed two petitions for <em>inter partes </em>review, both challenging claims of the ’479 patent as obvious. In the first proceeding, the Board adopted a claim construction requiring the fused image to maintain both Wide perspective and Wide position point of view (POV) and determined the prior art did not disclose maintaining both. In the second proceeding, the Board focused on an error in the calculation conducted by Apple’s expert to support its nonobviousness determination. Apple appealed.

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The Federal Circuit vacated and remanded. On the claim construction issue presented in the first proceeding, the Court held that the intrinsic evidence aligned better with Apple’s proposed construction, which required the fused image to maintain Wide perspective POV or Wide position POV, but not both. Accordingly, the Court vacated and remanded the Board’s final written decision in the first proceeding.

In reviewing the Board’s determination in the second proceeding, the Court focused on Apple’s assertion that the Board’s decision violated the Administrative Procedure Act’s requirements concerning notice and opportunity to be heard. The Court explained that the APA requires the Board to “base its decision on arguments that were advanced by a party, and to which the opposing party was given a chance to respond.” The Court concluded that the Board’s decision on patentability was focused almost entirely on typographical errors in Apple’s expert’s declaration, “that neither party asserted were material to the claimed invention—and only one of which Corephotonics even identified as an error.” The Court held that the Board’s failure to explain why it found these errors meaningful in the patentability analysis, particularly where the parties’ arguments had “focused entirely on questions of manufacturability and scalability,” did not comport with the notice requirements of the APA. Accordingly, the Court vacated and remanded the Board’s final written decision in the second proceeding as well.

CAFC Reiterates APA Notice Requirement