A Point of View vs The Point of View: Federal Circuit’s Subtle Claim Construction

by Dennis Crouch

The Federal Circuit recently vacated and remanded a pair of Patent Trial and Appeal Board (PTAB) decisions that had upheld patent claims owned by Corephotonics. Apple Inc. v. Corephotonics, Ltd., No. 2022-1350 (Fed. Cir. Sept. 11, 2023). The appellate court held the PTAB erroneously construed a disputed claim term by failing to appreciate the significance of “a” versus “the” in the claims. It also found the PTAB violated the Administrative Procedure Act (APA) by resting its obviousness determination on arguments and evidence not squarely raised by the parties.

The Dispute Over Dual-Lens “Portrait Mode”

The patent at issue, U.S. Patent No. 10,225,479 (‘479 patent), relates to using dual-aperture camera systems in smartphones to create aesthetically pleasing “portrait photos.” Specifically, the patent discloses combining images from a wide-angle “Wide” lens and a telephoto “Tele” lens to produce a fused image showing a sharp subject in front of a blurred background.  Portrait mode is incredibly popular on Apple and Android phones and so the industry is eager to invalidate the patent held by Tel Aviv based Corephotonics.

Apple filed two petitions for inter partes review (IPR) challenging claims of the ‘479 patent as obvious based primarily on a prior art reference known as Parulski, which discloses a dual-lens digital camera but does not specify how image fusion occurs.  U.S. Patent No. 7,859,588.

Claim Construction – The Significance of “A” vs. “The”

In the first proceeding (IPR2020-00905), the parties disputed the proper construction of the claim term “fused image with a point of view (POV) of the Wide camera.” Apple argued this term required maintaining either the Wide image’s perspective or position point of view in the fused image, while Corephotonics contended it mandated both Wide perspective and position. Patentees often argue for narrow constructions during IPR proceedings in order to avoid the prior art. Here, the patentee’s narrow construction won the day and the PTAB found Apple failed to show the claims were obvious under this narrower construction.

Examining claim construction de novo, the Federal Circuit concluded that the PTAB had erroneously construed the term too narrowly based upon use of the indefinite article “a POV” as well as intrinsic evidence from the patent specification.

The court first looked at the claim language in context, noting the claims recite “a point of view” rather than “the point of view” of the Wide camera, suggesting the fused image need only maintain one type of Wide point of view. While the specification discloses that “point of view” includes both perspective and position, the claims’ use of “a” rather than “the” was critical:

A reasonable reading of [the specification] is that Wide perspective and Wide position are two different types of Wide point of view. The claim term requires only that the fused image maintain ‘a point of view of the Wide camera,’ i.e., only one of the disclosed types of Wide point of view.

Slip Op.  The court also explained that limiting the claims to require both Wide perspective and position would improperly exclude disclosed embodiments where the fused image has a “mixed” point of view, like Wide perspective but Tele position.

Taken together and in context, however, the intrinsic evidence supports that the claim term requiring a fused image maintaining ‘a point of view of the Wide camera’ requires only that the fused image maintain Wide perspective point of view or Wide position point of view, but does not require both.

With this broader construction, the Federal Circuit vacated the PTAB’s first decision and remanded for further analysis of whether the prior art disclosed the disputed limitation under the clarified standard.

While the Federal Circuit suggested the patentee could have defined “point of view” to require both perspective and position by using “the” in the claims, this may have been improper due to lack of antecedent basis. Generally, a new limitation should be introduced using an indefinite article like “a” rather than a definite article like “the.” The existence of this rule of patent claim drafting raises the question of how much interpretive weight should be given to a patentee appropriately following the rule. Here, the use of “a point of view” in the claims adhered to the common rule of using “a” to introduce a new limitation. The Federal Circuit relied heavily on this choice of article in reaching its broader construction. But because patentees are expected to follow this drafting rule, it is debatable whether such weight should be placed on the patentee’s decision to use “a” in accordance with standard practice rather than “the.” This highlights some tension between claim drafting best practices and reliance on subtle differences in claim language during claim construction.  Of course, the patentee could have simply drafted claims that clearly stated the structure being claimed.  Here, the Board noted that the disclosure was “not a model of clarity,” something that should weigh against the patentee.

Sua Sponte Findings Without Adequate Explanation or Opportunity to Respond

In the second proceeding (IPR2020-00906), Apple asserted specific claims reciting detailed camera parameters would be obvious based on combining Parulski with the Ogata reference. U.S. Patent No. 5,546,236. But the PTAB rested its determination that Apple had not proven obviousness almost entirely on typographical errors in the declaration of Apple’s expert, Dr. Sasián, which were barely mentioned by the parties.

Apple appealed both PTAB decisions to the Federal Circuit.

The appellate panel held that resting a determination of nonobviousness primarily on typographical errors in Apple’s expert declaration, without prior notice to the parties, violated the APA. The court explained that while the PTAB can reject unreliable expert testimony, it must provide a reasoned explanation supported by evidence and base its decision on issues the parties had notice and chance to address. Those factors were not present here:

Corephotonics did not rely on [the expert’s] error in any of its arguments on the merits. And it did not contend that this error demonstrated that there would have been no reasonable expectation of success or that it alone was a sufficient basis to find all of Dr. Sasián’s analysis unreliable.

Slip Op. Further, while the PTAB identified additional errors, these inconsistencies were never raised by the parties and appeared to lack evidentiary support.  The PTAB’s “explanations must be supported by substantial evidence, and its decisions must be reached only after the parties have been provided fair notice and an opportunity to be heard.”  Because the PTAB focused on peripheral issues not squarely presented by the parties, it failed to resolve the core obviousness disputes actually raised.

On remand, the PTAB will have the chance to try again — and, more particularly, Apple will get another bite at the Corephotonics patent.

36 thoughts on “A Point of View vs The Point of View: Federal Circuit’s Subtle Claim Construction

  1. 3

    Bros can someone explain to me why i see the “tax assessment” of almost every property on Zwillow etc. as being like 30-50% less than the asking (and even usually the eventual sale price) of like nearly all properties? What is up with the tax assessments being so ridiculously low? I was looking for houses for the last few years and just kept seeing this. And I saw this doc (below) whining about how property taxes are super regressive. Not sure that I agree with that, but I do agree with people having to pay “property tax” on properties that the bank owns the majority of is crazy (most houses people are paying a mortgage on). Lol. But in any event, does anyone know what’s up with this? Is it simply that they only re-assess every 4-10 years depending on location as I have heard? Seems weird they don’t reassess at time of sale.

    link to youtube.com

    1. 3.1

      Simple: the two evaluations are not connected.

      Perhaps your question could be rephrased: Why are the valuations not connected?

      1. 3.1.1

        anon, you poot lamr dob, ther’s no requirement that you havr to be a big D-head, yet, you fulfill the position well, you ole D-head 🙂 Great work, on th volunteer, I bet ya never were military, only internet wannabee, hahah, loser POS


          Ahh Chrissy, what sets you off here my friend?

          The simplicity (and accuracy) of my post has gotten you all misty.

    2. 3.2

      If it helps, I had the opposite problem on my old townhouse back in the early 2010’s. Fortunately for me, because there were literally identical comparables sold every year, it was trivial to appeal the assessments down to market.

      The weird part is that the successful appeals didn’t reset the accessed value; I had to go through the whole process 5 or 6 straight years (before I eventually moved).

      1. 3.2.1

        That is fortunate, sorry to hear about your troubles. I wonder tho, did you just happen to have it get reassessed right around the time you bought and the valuations had jumped right around then (aka we’re in a housing bubble period right when you’re buying)? And did you succeed on appeal or just moved away and left the problem for someone else to deal with? Was the property tax ongoing proceedings also a reason you moved or did you just move regardless?


          I bought ‘new,’ so as with most townhomes, the price immediately dropped 10-15%. There was a second drop during the Obama housing crisis. I eventually sold after 8-9 years for a $15K loss /shrug

          My general impression is that the city resets on sales or remodel permit, but just uses some sort of historical average inflation number between those events.

          >And did you succeed on appeal or just moved away and left the problem for someone else to deal with?

          Appeals were all successful. And trivial…if you paid attention to the relevant deadlines.

    3. 3.3

      Two reasons.

      1) Many jurisdictions only assess property at a certain percentage of the market value. I believe where I live it is 70%.
      2) Property taxes are usually re-assessed at some preset time period (e.g., every 5 years). In times of rapid increase in home prices, this will cause the tax assessment to be considerably less than the actual market price.

      I do agree with people having to pay “property tax” on properties that the bank owns the majority of is crazy
      You don’t think that if the bank had to pay for it that they wouldn’t find a way to recover the cost from you? In fact, many mortgage companies will create an escrow account to pay for the property taxes and will increase the cost of your monthly mortgage to cover that amount.

      Seems weird they don’t reassess at time of sale.
      And what if the home hasn’t been sold for 20 years?

      1. 3.3.1

        Ok so that makes a bit of sense. I had heard they deliberately under assessed, but 70% seems much lower than the 90% I had been hearing.

        And yes, I’m familiar with the reassessment period, but I’m just surprised they don’t reassess at time of purchase. Reason I would bring this up is we’ve got housing prices having shot through the roof thanks to boomer policies, and they shoot up super high well before the reassessment, so you’ve got people living in 400k houses assessed at 150k, paying like 1/2 the taxes they would be.

        “You don’t think that if the bank had to pay for it that they wouldn’t find a way to recover the cost from you?”

        I’m sure they would, the whole mortgage industry and setup is a scam.

        “And what if the home hasn’t been sold for 20 years?”

        Then yeah every 5 years or so should be fine. Main issue I’ve seen lately is the houses are going up up up in value, get sold like 3x in 5-10 years, and it’s still sitting at tiny assessment. People are living in supposedly hugely valuable houses paying like 1/2 the taxes they would be under even a 70% assessment like you mentioned above. I further believe that this is yet another thing that helps the bubbles occur. People buy a property secure in the knowledge that they’ll be paying tiny taxes for 4-10 year (depending on jurisdiction) period and thus don’t mind paying the very large inflated bubble prices. If we had updated taxes on huge sale, it should help the buyers think 2x about helping bubble up the housing market (and discourage people wanting to buy places and not live in them or rent them, which I find somewhat distasteful).


          Let me guess, 6 – fresh from college to DC, always rented, and never owned a home that you lived in.

          Your musings SMACK of being disassociated from any sense of “lived experience.”

                1. Meh, it didn’t bother following any of the details, and my quick read today showed that the “D’s” did not (and had no hope of) switching enough of the “R’s” to convict.

                  Let me know if you heard of THAT one before (as we also near the mirror play with this administration).


                Some of the cross-examinations of the witnesses for the prosecution were master classes in cross.


            “Let me guess, 6 – fresh from college to DC, always rented, and never owned a home that you lived in.

            Your musings SMACK of being disassociated from any sense of “lived experience.””

            All true.

            “Mom kicked him out of the basement finally.”

            Um no, my mom is literally living in my grandmother’s basement as I live in a lower luxury apt. The later being same as it has been for decade+ now.

                1. Dore is not in my playlist.

                  (Dr.Epstein should not be confused with Epstein Island, and the visitor list therein)

                  This particular episode speaks more to the Section 230 debate (and he emphasizes that he is not a Conservative — which the Sprint Left — and Malcolm’s One Bucket approach is infamous for this — will expressly contest.

                  Manipulation upon manipulation.

  2. 2

    >Here, the Board noted that the disclosure was “not a model of clarity,” something that should weigh against the patentee.

    A 112 rejection made w/o a “reasoned explanation supported by evidence and base[d] … on issues the parties had notice and chance to address” it??

    1. 2.1

      Somewhat deep family of continuations, and for this one, a First Action Allowance.

      The Court wants to “weigh [this] against the patentee,’ but the Court also neglects the adage that the presence (and level) of presumption of validity includes the notion that the Court MUST consider that the Administrative Agency of the Executive Branch that is the United States Patent and Trademark Office has fully vetted the granted claims.

      While I (indeed) do often rail at examiners to “do their job,” a granted patent must have that presence and level of legal condition of 35 USC 282.

      1. 2.1.1

        My guess is that this ends up being the most cited sentence of the case. Going forward, every defendant should argue “the very existance of a disputed term ‘weighs against’ the patentee.”

        And I suspect it will be largely successful, as the sales pitch targets everyone’s natural laziness.

    2. 2.2

      Will the patent owner get to offer a substitute narrowing claim in this CAFC-remanded IPR that could overcome the claim scope ambiguity issue here?* [That is the only way any 112 issues will get considered in an IPR.] If so, will the above drawing from the patent be sufficient?]
      Or, will a proper consideration of Apples expert declarations prevail anyway?
      *If this patent is as valuable as implied, could this be an IPR that ends up putting the patent owner in better shape for a trial and appeal than with the original claim?

      1. 2.2.1

        Given the parsing by the Court (and recognizing that applicants have every right to choose to NOT cover every embodiment in the specification), one might view a further proceeding as eminently equitable to allow an amendment to reach the asserted “both” aspect.

        But amendments in post grant proceedings are not a matter of right.

    1. 1.1

      Why is the CAFC supposed to be anyone’s “friend”? Ordinarily, if the judge hearing your case is your friend, that judge is supposed to recuse.

    2. 1.2

      Pro Say said:

      “With inventor / patent owner friends like the CAFC, who needs enemies?”

      Or, as Matthew Broderick said in The Road to Wellville (link to en.wikipedia.org)

      “With friends like these who needs enemas?”

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