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ARTICLE · 13 DECEMBER 2023

Another Bite? CAFC Allows Expansion Of Arguments In Reply

Jones Day
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In a recent decision, the Federal Circuit found no abuse of discretion by the Board when it allowed Apple to expand its analogous art contention in its IPR reply...

United StatesIntellectual Property
Evan Jones
Evan Jones
Emily J. Tait
Emily J. Tait
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In a recent decision, the Federal Circuit found no abuse of discretion by the Board when it allowed Apple to expand its analogous art contention in its IPR reply, finding that the Board's decision did not run afoul of the "newness" nor "responsiveness" restrictions governing what a petitioner may include in its reply. See Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990 (Fed. Cir. 2023).

By way of background, Corephotonics filed suit against Apple in the Northern District of California, alleging infringement of patents related to systems and techniques that minimize the "jump" effect caused from a dual-aperture camera system switching between wide-lens and tele-lens when zooming in or out. Apple responded with IPR petitions that challenged all claims as obvious over two prior art references. The Board ruled in Apple's favor, finding the challenged claims unpatentable as obvious. Corephotonics appealed.

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