NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

COREPHOTONICS, LTD.,

Appellant

v.

APPLE INC.,

Appellee

ANDREW HIRSHFELD, PERFORMING THE 

FUNCTIONS AND DUTIES OF THE UNDER 

SECRETARY OF COMMERCE FOR 

INTELLECTUAL PROPERTY AND DIRECTOR OF 

THE UNITED STATES PATENT AND TRADEMARK 

OFFICE,

Intervenor

______________________

2020-1425

______________________

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2018-

01133.

______________________

Decided: May 20, 2021

______________________

ROBERT J. GAJARSA, Russ August & Kabat, Washington, DC, argued for appellant. Also represented by MARC 

Case: 20-1425 Document: 61 Page: 1 Filed: 05/20/2021
2 COREPHOTONICS, LTD. v. APPLE INC.

AARON FENSTER, NEIL RUBIN, Los Angeles, CA. 

 ANGELA OLIVER, Haynes & Boone, LLP, Washington, 

DC, argued for appellee. Also represented by ANDREW S.

EHMKE, DEBRA JANECE MCCOMAS, Dallas, TX; DAVID W.

O'BRIEN, HONG SHI, Austin, TX.

 MAUREEN DONOVAN QUELER, Office of the Solicitor, 

United States Patent and Trademark Office, Alexandria, 

VA, for intervenor. Also represented by MICHAEL S.

FORMAN, THOMAS W. KRAUSE, FARHEENA YASMEEN 

RASHEED.

 ______________________

Before NEWMAN, REYNA, and TARANTO, Circuit Judges.

REYNA, Circuit Judge.

Corephotonics, Ltd. appeals a final written decision of 

the Patent Trial and Appeal Board in an inter partes review brought by Apple Inc. Corephotonics argues that the 

Board issued its decision in violation of the Appointments 

Clause because the Board’s decision came after this court’s 

decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 

1320, 1335 (Fed. Cir. 2019) but before this court issued its 

mandate. On this basis, Corephotonics argues that the 

Board’s decision should be vacated and remanded. On the 

merits, Corephotonics argues that substantial evidence 

does not support the Board’s findings as to patentability. 

Because we determine that the Board issued its decision 

after this court’s decision in Arthrex we decline to vacate 

and remand the Board’s decision underlying this appeal. 

Moreover, because substantial evidence supports the 

Board’s patentability determination, we affirm. 

BACKGROUND

On May 22, 2018, Apple Inc. (“Apple”) filed a petition 

for inter partes review at the Patent Trial and Appeal 

Board (“Board”), asserting that claims 1–4 of U.S. Patent 

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COREPHOTONICS, LTD. v. APPLE INC. 3

No. 9,538,152 (the “’152 patent”) would have been obvious 

over U.S. Patent Publication No. 2008/0030592 to Border 

et al. (“Border”) in view of U.S. Patent No. 7,859,588 to Parulski et al. (“Parulski”). J.A. 102. 

The ’152 patent is directed to a “multi-aperture imaging system comprising a first camera with a first sensor 

that captures a first image and a second camera with a second sensor that captures a second image.” ’152 patent, Abstract. The ’152 patent discloses a dual-aperture camera 

used to capture synchronous images from both a wide-angle lens and a miniature telephoto lens with higher resolution in a narrower field. Id., col. 2, ll. 30–43; see also id. col. 

2 l. 64–col. 3 l. 10. A “different magnification image of the 

same scene is grabbed by each subset, resulting in field of 

view (FOV) overlap between the two subsets.” ’152 patent 

at col. 3 ll. 11–14. The wide-angle and telephoto images 

are then fused to output one combined image. Id. at col. 3

ll. 11–24. 

The claims of the ’152 patent require a processor configured to “register the overlap area” of a “second image as 

non-primary image” to a “first image as primary image to 

obtain the output image,” where the output image must be 

from either the “point of view of the first camera” or the 

“point of the view of the second camera.” Id. at col. 13 ll. 

5–17. The image registration enables the “output image 

point of view” to be “determined according to the primary 

image point of view (camera angle).” Id. at col. 9 ll. 26–29. 

As a result of this image registration process, “the point of 

view of the output image is that of the first camera,” if the 

field of view, or FOV, of the second camera (2) is less than 

the FOV of the first camera (1) based on a zoom factor (ZF) 

input, or if FOV2<FOVZF<FOV1. Id. at col. 13 ll. 8–11.1

1 The patent further explains how the first or second 

image become the primary image as follows: the “choice of 

the Wide image or the Tele image as the primary and 

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4 COREPHOTONICS, LTD. v. APPLE INC.

Specifically, the representative asserted claims of the ’152 

patent recite:

1. A multi-aperture imaging system comprising:

a) a first camera that provides a first image, the 

first camera having a first field of view (FOV1) and 

a first sensor with a first plurality of sensor pixels 

covered at least in part with a standard color filter 

array (CFA);

b) a second camera that provides a second image, 

the second camera having a second field of view 

(FOV2) such that FOV2<FOV1 and a second sensor 

with a second plurality of sensor pixels, the second 

plurality of sensor pixels being either Clear or covered with a standard CFA, the second image having an overlap area with the first image; and

c) a processor configured to provide an output image from a point of view of the first camera based 

on a zoom factor (ZF) input that defines a respective field of view (FOVZF), the first image being a 

primary image and the second image being a nonprimary image, wherein if FOV2<FOVZF<FOV1

then the point of view of the output image is 

that of the first camera, the processor further 

configured to register the overlap area of the 

auxiliary images is based on the ZF chosen for the output 

image. If the chosen ZF is larger than the ratio between 

the focal-lengths of the Tele and Wide cameras, the Tele 

image is set to be the primary image and the Wide image 

is set to be the auxiliary image. If the chosen ZF is smaller 

than or equal to the ratio between the focal-lengths of the 

Tele and Wide cameras, the Wide image is set to be the 

primary image and the Tele image is set to be the auxiliary 

image.” ’152 patent col. 9 ll. 33–40. 

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COREPHOTONICS, LTD. v. APPLE INC. 5

second image as non-primary image to the first image as primary image to obtain the output image.

2. The multi-aperture imaging system of claim 1, 

wherein, if FOV2 FOVZF, then the processor is 

further configured to provide an output image from 

a point of view of the second camera.

’152 patent col. 12 l. 59–col. 13 l. 17 (emphasis added).2 

The Board issued its final written decision on December 2, 2019, concluding that all challenged claims are unpatentable as obvious. J.A. 1–33; see also Apple Inc. v. 

Corephotonics Ltd., IPR2018-01133, 2019 WL6523190 

(P.T.A.B. Dec. 2, 2019). Of particular importance to the 

merits of this appeal, the Board found that the Border reference disclosed the limitation “the point of view of the output image is that of the first camera” appearing in claim 1. 

J.A. 24. 

Corephotonics appeals. This court has jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A). 

DISCUSSION

This court reviews the Board’s factual determinations 

for substantial evidence and its legal determinations de 

novo. In re Stepan Co., 868 F.3d 1342, 1345 (Fed. Cir. 

2017). Obviousness is a question of law based on subsidiary findings of fact. Id.

I 

Before reaching the merits, we address Corephotonics, 

Ltd.’s (“Corephotonics”) initial argument. Corephotonics 

argues that the Board’s decision was issued in violation of 

the Appointments Clause because the Board issued its 

2 Claims 3 and 4 parallel the limitations of claims 1 

and 2, but are method claims rather than system claims. 

’152 patent col. 13 l. 18–col. 14 l. 22. 

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6 COREPHOTONICS, LTD. v. APPLE INC.

final written decision on December 2, 2019, which was after this court’s decision in Arthrex, but before the associated mandate was issued. Specifically, Corephotonics 

contends that only the mandate in Arthrex would have ordered compliance by the agency to this court’s opinion in 

Arthrex. 

In Caterpillar, this court determined that final written 

decisions issued by the Board after the Arthrex decision do 

not require a remand because they do not implicate the Appointments Clause issues raised in Arthrex. See Caterpillar Paving Prods. Inc. v. Wirtgen Am., Inc., 957 F.3d 1342, 

1343 (Fed. Cir. 2020) (denying a motion to vacate and remand based on Arthrex where the Board’s decision issued 

in November 2019, after the opinion in Arthrex). While the 

appellant in Caterpillar may not have raised the specific 

argument regarding the mandate implication that Corephotonics raises here, we see no reason to depart from our 

holding in Caterpillar for purposes of resolving this appeal. 

Accordingly, we decline to vacate the Board’s decision and 

remand to the Board.

II

As to the merits of its appeal, Corephotonics argues 

that substantial evidence does not support the Board’s 

finding because Border does not teach providing “an output 

image from a point of view of the first camera,” as required 

by the claims. ’152 patent col. 13 ll. 5–6. Instead, Corephotonics contends that Border teaches stitching two images 

together to provide a composite image with portions from 

the point of view of the first camera and other portions from 

the point of view of the second camera. Appellant’s Br. 1–

2, 13. In other words, Border’s teaching produces a composite image with parts having two different points of view, 

not an image with the “point of view of the first camera.” 

Id.

The Board concluded that Border’s express disclosure 

of transforming coordinates from the telephoto to the wideCase: 20-1425 Document: 61 Page: 6 Filed: 05/20/2021
COREPHOTONICS, LTD. v. APPLE INC. 7

angle image, along with the testimony of Apple’s expert, 

Dr. Oliver Cossairt, is sufficient to meet the limitation. 

J.A. 24. We agree. Specifically, Border states that it

“transforms the coordinates of the telephoto image 206 to 

the wide image 204.” Border at ¶ 38 (J.A. 694). In addition, Dr. Cossairt testified that transforming the coordinates has the effect of making the telephoto portion of the 

composite image have the same point of view as the wide 

image. J.A. 19; see also J.A. 651–52 (Declaration of Dr. Oliver Cossairt). Notably, Corephotonics’s expert did not, 

and could not, testify to the contrary as he stated that he 

was not an expert on this particular topic. J.A. 19; see also 

J.A. 1553–54 (Declaration of Dr. James Koshmach). Accordingly, because substantial evidence supports the 

Board’s determination, we affirm. The court has considered the remainder of Corephotonic’s arguments and finds 

them unpersuasive. 

CONCLUSION

The court declines to vacate and remand the Board’s 

decision in view of Arthrex, because the final written decision underlying this appeal issued after this court issued 

its decision in Arthrex. In addition, substantial evidence 

supports the Board’s well-reasoned decision, and thus the

court affirms the Board’s unpatentability findings as to 

claims 1–4 of the ’152 patent. 

AFFIRMED

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