Case: 20-1438 Document: 46 Page: 1 Filed: 06/23/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC.,
Appellant
v.
COREPHOTONICS, LTD.,
Appellee
______________________
2020-1438
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
01146.
______________________
Decided: June 23, 2021
______________________
DEBRA JANECE MCCOMAS, Haynes & Boone, LLP, Dal-
las, TX, argued for appellant. Also represented by ANDREW
S. EHMKE; ANGELA OLIVER, Washington, DC; MICHAEL
SCOTT PARSONS, Plano, TX.
MARC AARON FENSTER, Russ August & Kabat, Los An-
geles, CA, argued for appellee. Also represented by BRIAN
DAVID LEDAHL, NEIL RUBIN.
______________________
Case: 20-1438 Document: 46 Page: 2 Filed: 06/23/2021
2 APPLE INC. v. COREPHOTONICS, LTD.
Before TARANTO, HUGHES, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
This is an appeal from the final decision of the Patent
Trial and Appeal Board in an inter partes review of
U.S. Patent No. 9,568,712. Petitioner Apple Inc. appeals,
asking this court to consider a dispute regarding anticipa-
tion by an inoperative embodiment, as well as a factual is-
sue regarding motivation to combine. Because we
determine that the Board’s finding of no anticipation is cor-
rect as a matter of law, we affirm that finding. We also
determine that the Board’s finding of no motivation to com-
bine is premised on a clear mathematical error that ap-
pears to have tainted its analysis. Thus, we vacate the
Board’s determination of nonobviousness and remand for
reconsideration.
BACKGROUND
I
The ’712 patent is assigned to Corephotonics Ltd. and
relates to a miniature telephoto lens assembly that can be
used in portable electronic devices, such as a cell phone.
’712 patent col. 1 ll. 18–22. Cell phone cameras “in partic-
ular require a compact imaging lens system for good qual-
ity imaging and with a small total track length (TTL).”
Id.
at col 1 ll. 29–32. TTL is measured from the first lens to
“an electronic sensor, film, [or] an image plane correspond-
ing to either the electronic sensor or a film sensor[.]” Apple
Inc. v. Corephotonics Ltd., No. IPR2018-01146,
2019 WL
6999883, at *6 (P.T.A.B. Dec. 4, 2019) (Final Decision).
Given the high demand for digital cameras in cell phones,
the design for the optical lens assemblies for use in cell
phone cameras has evolved. According to the ’712 patent,
“[c]onventional lens assemblies comprising four lens ele-
ments are no longer sufficient for good quality imaging,”
and the latest five-lens-element assemblies “suffer[] from
at least the fact that the TTL/EFL (effective focal length)
Case: 20-1438 Document: 46 Page: 3 Filed: 06/23/2021
APPLE INC. v. COREPHOTONICS, LTD. 3
ratio is too large.” ’712 patent col. 1 ll. 32–38. Thus, the
’712 patent is directed to a compact five lens assembly with
a TTL that is smaller than the EFL, i.e., a TTL/EFL ratio
that is less than one, providing “better image quality than
existing lens assemblies.”
Id. at col. 1 ll. 39–41. Figure 1A
illustrates an embodiment of the claimed five lens assem-
bly, which “advantageously” has a TTL/EFL ratio of less
than one:
Id. Fig. 1A;
id. at col. 2 ll. 58–59, col. 4 ll. 40–42.
Each of the embodiments described in the ’712 patent
also has “an F number” less than 3.2. See
id. at col. 2
ll. 2–3. The F number refers to the amount of light that
enters the lens assembly: A lower F number represents a
wider camera aperture, which allows more light to enter
the lens system, and a higher F number represents a
smaller camera aperture, which means less light enters the
lens system. See Appellant’s Br. 10 (first citing J.A. 1734
Case: 20-1438 Document: 46 Page: 4 Filed: 06/23/2021
4 APPLE INC. v. COREPHOTONICS, LTD.
(Moore Dep. 83:4–11); and then citing J.A. 1464 (Moore
Decl. ¶ 36)).
Claims 1 and 6 are representative of the claims on ap-
peal:
1. A lens assembly, comprising: a plurality of re-
fractive lens elements arranged along an optical
axis, wherein at least one surface of at least one of
the plurality of lens elements is aspheric, wherein
the lens assembly has an effective focal length
(EFL), a total track length (TTL) of 6.5 millimeters
or less and a ratio TTL/EFL of less than 1.0, and
wherein the plurality of lens elements comprises,
in order from an object side to an image side, a first
lens element with a focal length f1 and positive re-
fractive power, a second lens element with a focal
length f2 and negative refractive power and a third
lens element with a focal length f3, the focal length
f1, the focal length f2 and the focal length f3 ful-
filling the condition 1.2×|f3|>|f2|>1.5×f1.
...
6. The lens assembly of claim 2, wherein a lens as-
sembly F# is smaller than 2.9.
’712 patent col. 7 ll. 55–67, col. 8 ll. 32–33.
II
A
Konno 1 is the primary prior art reference relied on by
Apple for both anticipation and obviousness. Like the
’712 patent, Konno is directed to a “thin and small-sized
imaging apparatus capable of acquiring an image of high
quality and high resolution[.]” J.A. 824 ¶ 6. Konno specif-
ically discloses dual lens assemblies comprising both a
1 Japanese Patent Publication JP 2013-106289.
Case: 20-1438 Document: 46 Page: 5 Filed: 06/23/2021
APPLE INC. v. COREPHOTONICS, LTD. 5
wide-angle lens and a telephoto lens. Relevant here is
Konno’s telephoto lens from Example 2—referred to as
“EX2-LN2”—the sole embodiment that Apple relies on:
J.A. 851 Fig. 16. As shown below, Konno discloses several
parameters for its dual lens system:
Case: 20-1438 Document: 46 Page: 6 Filed: 06/23/2021
6 APPLE INC. v. COREPHOTONICS, LTD.
J.A. 459 (as annotated by Apple’s expert Dr. Sasián (citing
J.A. 841 Tbl. 1)). As shown in Table 1, Konno’s telephoto
lens EX2-LN2 has an EFL of 5.51 mm and a TFL of
4.91 mm, resulting in a TTL/EFL ratio of 0.891, i.e., less
than 1.0. It is undisputed, however, that the data provided
in Table 1 for EX2-LN2 contains an error such that “lenses
L4 and L5 overlap (i.e., occupy the same space).”
J.A. 497–98 (Sasián Decl. ¶ 64).
Konno further explains that, for a dual lens assembly,
it is desirable for the F-numbers of the wide-angle and tel-
ephoto lenses to be close to one another to reduce the “im-
pression of blurring,” which gives “an unnatural feeling to
the user.” J.A. 831 ¶ 38. Konno also explains that, “[t]o
slim down the entire apparatus, it is advantageous to make
the second imaging optical system darker than the first im-
aging optical system[,]” i.e., the F-number of the second im-
aging optical system would need to be higher than the first
imaging optical system.
Id. Thus, “it is preferred that the
F-numbers of the first and second imaging optical systems
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APPLE INC. v. COREPHOTONICS, LTD. 7
are close to each other so as to satisfy the conditional ex-
pression (5).”
Id. Conditional expression (5) refers to the
following “[d]esirabl[e]” relationship:
0.6 < FNOw/FNOm < 1.3
J.A. 831 ¶ 37. FNOw refers to the F number of the first
lens, i.e., the wide-angle lens, and FNOm refers to the F
number of the second lens, i.e., the telephoto lens. See
id.
As shown above in Table 1, Konno’s telephoto lens
EX2-LN2 has an F number (FNOm) of 4.00, and its wide-
angle lens, EX2-LN1, has an F number (FNOw) of 3.00,
thus satisfying conditional expression (5).
B
Bareau 2 is a secondary prior art reference relied on by
Apple for obviousness. Bareau generally discusses the im-
plications for designing and manufacturing digital camera
lenses for cell phones as compared to conventional camera
lenses. In discussing the specifications for a ¼″ CMOS im-
age sensor for use in a cell phone camera, Bareau discloses
that the F number is “2.8, fixed,” J.A. 776, explaining that
“most camera module customers specify” this F number,
J.A. 777.
III
Apple filed an IPR petition challenging claims 1, 2, 6,
7, 12–17, and 19 of the ’712 patent on three grounds. Final
Decision,
2019 WL 6999883, at *1. Relevant here, ground
1 asserted that claims 1, 2, 7, 12–13, 15–16, and 19 were
anticipated by Konno, and ground 2 asserted that claims 6
and 14 would have been obvious over Konno in view of
2 Jane Bareau & Peter P. Clark, The Optics of Min-
iature Digital Camera Modules, 6342 Proceedings of the
Society of Photo-Optical Instrumentation Engineers, Inter-
national Optical Design Conference (July 25, 2006),
https://doi.org/10.1117/12.692291.
Case: 20-1438 Document: 46 Page: 8 Filed: 06/23/2021
8 APPLE INC. v. COREPHOTONICS, LTD.
Bareau. 3
Id. at *2. The Board ultimately determined that
Apple failed to demonstrate that claims 1, 2, 7, 12–13,
15–16, and 19 were anticipated by Konno or that claims 6
and 14 would have been obvious over Konno in view of Bar-
eau.
Id. at *16.
Apple appeals. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
On appeal, Apple argues that the Board erred in find-
ing that Konno does not anticipate claims 1, 2, 7, 12–13,
and 19 4 because it applied the wrong legal framework for
enablement of an anticipatory prior art reference. Apple
contends that, under the proper framework, Konno antici-
pates the claims. Apple also asserts that the Board erred
in holding that that claims 6 and 14 would not have been
obvious because its motivation to combine analysis is prem-
ised on a clear mathematical error. We address each issue
in turn.
I
“A patent claim is invalid as anticipated only if each
and every element of the claim is expressly or inherently
disclosed in a single prior art reference.” Guangdong Ali-
son Hi-Tech Co. v. Int’l Trade Comm’n,
936 F.3d 1353,
1363–64 (Fed. Cir. 2019) (first citing
35 U.S.C. § 102
(2006); and then citing SRI Int’l, Inc. v. Internet Sec. Sys.,
Inc.,
511 F.3d 1186, 1192 (Fed. Cir. 2008)). The ultimate
question of anticipation is a finding of fact that we review
3 The Board’s finding that claims 15–17 are un-
patentable as anticipated by
U.S. Patent No. 3,888,956 to
Eggert (ground 3) is not at issue in this appeal.
4 Because claims 15 and 16 were found unpatentable
as anticipated by Eggert, Apple does not raise claims 15
and 16 in this appeal. Appellant’s Br. 8 n.2.
Case: 20-1438 Document: 46 Page: 9 Filed: 06/23/2021
APPLE INC. v. COREPHOTONICS, LTD. 9
for substantial evidence. See
id. at 1364 (citing Vizio, Inc.
v. Int’l Trade Comm’n,
605 F.3d 1330, 1342 (Fed. Cir.
2010)).
A
We begin our anticipation analysis by addressing Ap-
ple’s argument that the Board improperly shifted the bur-
den to Apple to prove that Konno was an enabling prior art
reference. “A prior art reference cannot anticipate a
claimed invention ‘if the allegedly anticipatory disclosures
cited as prior art are not enabled,’” In re Antor Media Corp.,
689 F.3d 1282, 1287 (Fed. Cir. 2012) (quoting Amgen Inc.
v. Hoechst Marion Roussel, Inc.,
314 F.3d 1313, 1354
(Fed. Cir. 2003)), that is, that the prior art reference “ena-
ble[s] the portions of its disclosure alleged to anticipate the
claimed invention,” id. at 1290. Whether a prior art refer-
ence is enabling is ultimately a question of law we review
de novo, but is “based on underlying factual findings” that
that we review for substantial evidence. Id. at 1287. In its
decision, the Board found that Apple’s “early identification
of the error” in Konno overcame the presumption of enable-
ment afforded to patents and printed publications. Final
Decision,
2019 WL 6999883, at *10. The Board then deter-
mined that Apple’s “failure to address the issue of enable-
ment in connection with the challenge applying Konno
alone prior to institution means that [Apple] has failed to
carry its burden of establishing anticipation” by a prepon-
derance of the evidence.
Id. In other words, the Board
shifted the burden to Apple to provide evidence before in-
stitution (i.e., in its petition) that Konno was enabling as
part of its burden to prove anticipation. This was error.
For the reasons discussed below, however, we conclude the
Board’s error was harmless.
It is well-established that prior art patents and printed
publications like Konno, a Japanese patent publication, are
presumed enabling. See, e.g., Impax Labs., Inc. v. Aventis
Pharm., Inc.,
545 F.3d 1312, 1316 (Fed. Cir. 2008); Amgen,
Case: 20-1438 Document: 46 Page: 10 Filed: 06/23/2021
10 APPLE INC. v. COREPHOTONICS, LTD.
314 F.3d at 1354–55; Antor, 689 F.3d at 1288–89. We have
held in the context of both district court litigation and pa-
tent prosecution that the burden of proving that a prior art
reference is not enabling is on the patentee/applicant, and
that it is error to shift that burden to the patent chal-
lenger/examiner. For example, in Impax, we explained
that “when an accused infringer asserts that a prior art pa-
tent anticipates specific patent claims, the infringer enjoys
a presumption that the anticipating disclosure also enables
the claimed invention.”
545 F.3d at 1316 (citation omit-
ted). There, we relied on our earlier decision in Amgen—
where we held that it was error to shift the burden of “prov-
ing the prior art reference’s enablement of the claimed in-
vention on the alleged infringer,”
id. (citing Amgen,
314 F.3d at 1355–56)—to conclude that “the district court
correctly placed the burden of proving non-enablement on
the patentee,”
id. Likewise, in Antor, we explained that,
“during patent prosecution, an examiner is entitled to re-
ject claims as anticipated by a prior art publication or pa-
tent without conducting an inquiry into whether or not that
prior art reference is enabling.” 689 F.3d at 1289. Once
the examiner has made a prima facie case of anticipation,
we held that “the burden shifts to the applicant to submit
rebuttal evidence of nonenablement.” Id.
The Board, citing Antor and Amgen (among others),
acknowledged this in its decision, but reasoned that “none
of these cases were in the context of AIA trial proceedings.”
Final Decision,
2019 WL 6999883, at *9. We disagree with
the Board’s reasoning. We do not see a principled distinc-
tion between our cases holding that this presumption and
burden apply during patent examination and in district
court litigation, and AIA trial proceedings. Thus, regard-
less of the forum, prior art patents and publications enjoy
a presumption of enablement, and the patentee/applicant
has the burden to prove nonenablement for such prior art.
It was error for the Board to suggest otherwise.
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APPLE INC. v. COREPHOTONICS, LTD. 11
As a result of its error, the Board refused to consider
evidence that Apple introduced with its reply in support of
enablement of Konno—which Apple reasonably introduced
after Corephotonics raised the issue of nonenablement. See
Appellant’s Br. 50 (citing J.A. 1656–61); see also
J.A. 1770–71 (Sasián Reply Decl. ¶ 2). The Board reasoned
that Apple’s failure to address enablement in its petition
meant Apple “failed to carry its burden of establishing an-
ticipation.” Final Decision,
2019 WL 6999883, at *10; see
also
id. at *9. This too was error because the Board in ef-
fect shifted the burden to Apple to prove enablement before
any assertion of nonenablement was raised.
B
Although the Board erroneously shifted the burden to
Apple to prove that Konno was enabling, that error was
harmless because, even affording Apple the presumption,
we conclude that the Board correctly found that Konno can-
not anticipate the challenged claims as a matter of law.
Here, Apple admits that Konno’s telephoto lens
EX2-LN2—the sole embodiment that it relies on for antic-
ipation—contains an error, specifically that lens elements
L4 and L5 overlap. The Board found that “lens L4 and L5
of Konno’s lens assembly ‘cannot be arranged’ to provide
‘[a] lens assembly . . . [that] has an effective focal length
(EFL), a total track length (TTL) of 6.5 millimeters or less’
as claimed without removing the overlap between lens L4
and L5.” Final Decision,
2019 WL 6999883, at *10 (altera-
tions in original). As such, the Board found that Konno
could not anticipate the challenged claims absent imper-
missible modification. See
id. We discern no error with
this conclusion. As the Board correctly noted, “[p]rior art
that must be modified to meet the disputed claim limita-
tion does not anticipate the claim.”
Id. at *9 (quoting En-
plas Display Device Corp. v. Seoul Semiconductor Co.,
909 F.3d 398, 405 (Fed. Cir. 2008)). Such modifications are
permissible only in an obviousness analysis.
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12 APPLE INC. v. COREPHOTONICS, LTD.
Apple argues that there is no need to modify Konno’s
telephoto lens EX2-LN2 to meet the challenged claims be-
cause it literally meets the claim limitations regardless of
whether there is overlap between lenses L4 and L5. As Ap-
ple’s expert, Dr. Sasián, explained, Konno’s telephoto lens
EX2-LN2 has a 5.51 mm EFL, a 4.91 mm TTL, and the
TTL/EFL ratio is 0.891, thus meeting the claim limitations
of a TTL of 6.5 mm or less and a TTL/EFL ratio of less than
1.0. See, e.g., J.A. 459 (Sasián Decl. (claim limitation
[1.5])). Although Apple is correct that the EX2-LN2 em-
bodiment meets the numerical requirements of the claims
absent modification, the problem is that the relied upon
embodiment is inoperative unless the overlap between
lenses L4 and L5 is fixed. Under our precedent, such inop-
erative embodiments cannot be anticipatory. See In re
Dowty,
118 F.2d 363, 366 (C.C.P.A. 1941) (“‘[A]n inopera-
tive prior art device may not be relied upon as an anticipa-
tion.’” (quoting In re Kehl,
101 F.2d 193, 195
(C.C.P.A. 1939))). We therefore conclude that Konno’s in-
operative telephoto lens EX2-LN2 cannot anticipate the
challenged claims.
We are also not persuaded by Apple’s argument that it
is not relying on lenses L4 and L5 for purposes of anticipa-
tion because the challenged claims require only three
lenses. As an initial matter, Apple’s petition and support-
ing expert declaration from Dr. Sasián repeatedly refer to
both lens L5 and Konno’s telephoto lens EX2-LN2 as a
whole, without any suggestion that Apple was not relying
on lenses L4 and L5 from that embodiment. See Final De-
cision,
2019 WL 6999883, at *10; see also Appellee’s
Br. 15–18. We also agree with Corephotonics that the pa-
rameters of Konno’s telephoto lens EX2-LN2 that Apple re-
lies on to show anticipation—the EFL, TTL, and TTL/EFL
ratio—are dimensions that are based on all five lens ele-
ments, not just three of the five. Appellee’s Br. 16–18.
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APPLE INC. v. COREPHOTONICS, LTD. 13
We therefore affirm the Board’s finding that the inop-
erative embodiment of Konno relied upon by Apple does not
anticipate claims 1, 2, 7, 12–13, and 19.
II
We turn next to the Board’s determination that Apple
failed to demonstrate that dependent claims 6 and 14 were
unpatentable as obvious. Apple asserts that the Board’s
finding that Apple did not provide a sufficient rationale for
combining Konno with Bareau is unsupported by substan-
tial evidence because its finding is premised on a mathe-
matical error. We agree.
A
Obviousness is a question of law based on underlying
fact findings that we review for substantial evidence, in-
cluding “whether a [person of ordinary skill in the art]
would have been motivated to combine the prior art to
achieve the claimed invention and whether there would
have been a reasonable expectation of success in doing so.”
TQ Delta, LLC v. Cisco Sys., Inc.,
942 F.3d 1352, 1357
(Fed. Cir. 2019) (quoting In re Warsaw Orthopedic, Inc.,
832 F.3d 1327, 1333 (Fed. Cir. 2016)).
Our review of the Board’s decision is under the stand-
ard set forth in the Administrative Procedure Act, which
“requires us to set aside conclusions or findings that are
‘arbitrary, capricious, an abuse of discretion, or otherwise
not in accordance with law,’ or ‘unsupported by substantial
evidence.’” Alacritech, Inc. v. Intel Corp.,
966 F.3d 1367,
1370 (Fed. Cir. 2020) (quoting
5 U.S.C. §§ 706(2)(A), (E)).
As a part of this review, “the Board is obligated to ‘provide
an administrative record showing the evidence on which
the findings are based, accompanied by the agency’s rea-
soning in reaching its conclusions.’” TQ Delta, 942 F.3d
at 1358 (quoting In re Lee,
277 F.3d 1338, 1342 (Fed. Cir.
2002)). Where the Board’s decision is based on multiple
alternative grounds, “we will uphold a decision of less than
Case: 20-1438 Document: 46 Page: 14 Filed: 06/23/2021
14 APPLE INC. v. COREPHOTONICS, LTD.
ideal clarity if the [Board’s] path may reasonably be dis-
cerned,” Japanese Found. for Cancer Rsch. v. Lee,
773 F.3d
1300, 1308 (Fed. Cir. 2014) (quoting Bowman Transp., Inc.
v. Ark-Best Freight Sys., Inc.,
419 U.S. 281, 285–86 (1974)),
for example, if “at least one of [the] multiple grounds is
valid and the [Board] would have acted on that ground
even if others were unavailable.” Japanese Found.,
773 F.3d at 1308 (citing Casino Airlines, Inc. v. Nat’l
Transp. Safety Bd.,
439 F.3d 715, 717 (D.C. Cir. 2006)).
B
We agree with Apple that the Board made a clear
mathematical error in finding that there was not sufficient
rationale for combining Konno’s teachings with Bareau.
Apple presented evidence to the Board that a skilled
artisan would have reduced the F number of Konno’s tele-
photo lens EX2-LN2 from 4.0 to 2.8, as taught by Bareau,
“‘to conform to modern cellphone camera lens specifica-
tions.’” Final Decision,
2019 WL 6999883, at *11 (quoting
J.A. 122). The Board rejected Apple’s arguments, finding
that Apple’s “rationale for combining Konno and Bareau is
not supported by sufficient rational underpinning.”
Id.
at *12. Specifically, the Board found that, in the combina-
tion proposed by Apple, FNOm—from Konno’s telephoto
lens EX2-LN2—“is lowered to 2.8, based on the teachings
of Bareau,” which “fail[s] to satisfy Konno’s conditional ex-
pression (5).”
Id. This finding is incorrect. Konno’s condi-
tional expression (5) requires that the ratio of the F number
for Konno’s wide-angle lens to the telephoto lens be within
a certain range, “[d]esirably” between 0.6 and 1.3. J.A. 831
¶ 37. As Apple explained in its opening brief, if the F num-
ber of Konno’s telephoto lens EX2-LN2 is decreased from
4.0 to 2.8, as taught by Bareau, the ratio of the F number
for the wide-angle lens (3.0) to the telephoto lens in the
modified Konno-Bareau lens assembly (2.8) would be 1.07,
which, contrary to the Board’s finding, satisfies Konno’s
conditional expression (5). Appellant’s Br. 56.
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APPLE INC. v. COREPHOTONICS, LTD. 15
Based on the decision before us, we are “unable to con-
clude that [the Board] would have reached the same deci-
sion absent its [mathematical] mistake[].” Hermes Consol.,
LLC v. E.P.A.,
787 F.3d 568, 571 (D.C. Cir. 2015). As an
initial matter, this is not a situation where we can reason-
ably discern that the Board was relying on multiple, inde-
pendent grounds to support its finding. For instance, the
Board explained that it was “not persuaded that the ordi-
narily skilled artisan would have looked to lower the
FNOm value of Konno’s telephoto lens assembly based on
Bareau’s teachings of a general preference to lower the
F number in cellphone cameras with wide-angle lens as-
semblies.” Final Decision,
2019 WL 6999883, at *12. The
Board also concluded that Apple failed to explain why a
skilled artisan “would disregard Konno’s own intrinsic
teaching of a lower F number (i.e., for a wide-angle lens
assembly) and look to another reference, Bareau, also con-
cerning wide-angle lens assemblies, to lower the F number
of Konno’s telephoto lens assembly.”
Id. (emphasis omit-
ted). Thus, it is not clear if the basis for the Board’s deci-
sion is premised on the fact that Bareau’s teachings are
limited to wide-angle lens assemblies, whereas Apple
sought to modify Konno’s telephoto lens assembly, or its
view that modifying Konno in view of Bareau would require
disregarding Konno’s own intrinsic teaching. Nor can we
discern from the Board’s decision whether the “intrinsic
teaching” it was referring to was: (1) Konno’s conditional
expression; (2) Konno’s statement that “‘it is advantageous
to make the second imaging optical system darker than the
first imaging optical system,’”
id. (quoting J.A. 831 ¶ 38
(emphasis omitted)), i.e., by increasing the F number of the
second optical imaging system (here, the telephoto lens
EX2-LN2) compared to the first; or (3) both.
We therefore vacate the Board’s determination that
claims 6 and 14 would not have been obvious in view of
Konno and Bareau, and remand to the Board for reconsid-
eration.
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16 APPLE INC. v. COREPHOTONICS, LTD.
CONCLUSION
We have considered the parties’ remaining arguments
and do not find them persuasive. For the foregoing rea-
sons, we affirm the Board’s anticipation finding, vacate the
Board’s determination of nonobviousness, and remand for
further proceedings consistent with this opinion.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No costs.
