In Corephotonics, Ltd., v. Apple Inc., [2022-1340, 2022-1341, 2022-1455, 2022-1456] (October 16, 2023) the Federal Circuit affirmed the PTAB’s determination that two references were analogous prior art, while vacating and remanding the Board’s obviousness determination for the Board to explain why a third reference — Martin — is (or is not) analogous art and how this finding affects its overall conclusion as to obviousness.  The Challenged Patents relate to dual-aperture camera systems and disclose techniques for using the images from both lenses when zooming while capturing video.

Prior art references are applicable to the obviousness inquiry only when they are analogous to the claims being challenged. See In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992); see also In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Art that is “too remote” from the patents being attacked cannot be treated as prior art.  The Federal Circuit uses two separate tests to define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.

Apple’s petitions were ambiguous; they did not make clear whether Apple was stating that Golan and Martin are in the same field of endeavor as the Challenged Patents or, instead, merely that Golan and Martin are in the same field of endeavor as one another. The Board wrote, “Martin is reasonably pertinent to the problem faced by the inventor: reducing an image jump effect seen in video output images when switching between cameras that have different fields of view. Apple and Corephotonics agree that these two sentences are, as written, incorrect: Martin does not disclose switching between cameras with different fields of view; rather, it is addressed to cameras with different points of view.  The Federal Circuit was unable We are unable to discern if the Board’s error was, in fact, merely typographical and harmless or, instead, a potentially-impactful error of substance. This prevented the Federal Circuit from concluding either that there is, or is not, substantial evidence to support the Board’s conclusion that Martin is analogous art to the Challenged Patents.  Accordingly, the Federal Circuit remanded to the Board for further explanation and, if needed, further fact finding.