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ARTICLE · 08 JULY 2021

Double-Check The Prior Art And Validate The Math: Lessons From Apple Inc. v. Corephotonics, Ltd.

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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In Apple Inc. v. Corephotonics, Ltd., No. 2020-1438 (Fed. Cir. June 23, 2021) (Taranto, Hughes, and Stoll), the Federal Circuit affirmed the PTAB's finding of no anticipation but vacated...

United StatesIntellectual Property
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Brooke M. Wilner
Brooke M. Wilner
Amanda Murphy
Amanda Murphy
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Holding

In Apple Inc. v. Corephotonics, Ltd., No. 2020-1438 (Fed. Cir. June 23, 2021) (Taranto, Hughes, and Stoll), the Federal Circuit affirmed the PTAB's finding of no anticipation but vacated its determination of nonobviousness. The Federal Circuit remanded the PTAB's conclusion that there was no motivation to combine because it held that conclusion was premised on a clear mathematical error.

Background

Apple filed a petition seeking inter partes review of Corephotonics' patent relating to a miniature telephoto lens assembly that can be used in portable electronic devices, such as cell phones. Cell phone cameras require a compact imaging lens system with a small total track length (“TTL”), which is the distance between the first camera lens to “an electronic sensor, film, or image plane corresponding to either the electronic sensor or a film sensor.” Id. at *2. Whereas prior art lens assemblies contained four or five lenses with long TTLs, Corephotonics'

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