In Apple Inc. v. Corephotonics Ltd., No. 22-1350, — F.4th — (Fed. Cir. Sept. 11, 2023), the Federal Circuit held that a typo in an expert report should not be case dispositive, especially where no party meaningfully raised the typo as relevant.

The single typographical error made by Dr. Sasián, on the other hand, was never identified by the parties as a dispositive issue, the resolution of which renders it unnecessary also to resolve the parties' disputes regarding manufacturing and scalability.

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            On this record, the Board's determination that the typographical error in Dr. Sasián's declaration was essentially dispositive of the issues in the case does not comport with the notice requirements of the APA. Apple (and Corephotonics, for that matter) had no reason to anticipate that the typographical error would be the basis for the Board's decision, given that the parties did not brief, argue, or even suggest this error was dispositive or would impact the claimed lens parameters. See Magnum Oil, 829 F.3d at 1381 (“[T]he Board must base its decision on arguments that were advanced by a party, and to which the opposing party was given a chance to respond.”).

Thus, the Court remanded for further proceedings that meet the APA's requirements for notice and the opportunity to respond.

Claim Construction of “a” Versus “the” Point of View

On a related “close issue of claim construction,” the Federal Circuit held that the PTAB erroneously construed a disputed claim term by failing to appreciate the significance of “a” versus “the” in the claims.

The patent at issue, U.S. Patent No. 10,225,479, is related to dual-aperture camera systems in smartphones for creating “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.

The claim language at issue was “fused image with a point of view of the wide camera.”

The IPR petitioner Apple argued that this required maintaining “only wide position POV or wide perspective POV” in the fused image, but not both—while the patent owner Corephotonics contended the claim language mandated both wide perspective POV and wide position POV in order to avoid the prior art.

The PTAB construed the term to mean “generating a fused image having a wide perspective POV and a wide position POV”; and then found that the claims were not obvious under this narrower construction.

Examining claim construction de novo on appeal, the Federal Circuit 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 specification was “not a model of clarity”; and the claims used “a” rather than “the” for the claimed point of view.

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.

Also, 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.

            We acknowledge that neither the claim language nor the specification presents a cut-and-dry case of claim construction regarding this claim term. 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.

Accordingly, the Court vacated the PTAB's patentability decision and remanded for further analysis of whether the prior art disclosed the disputed limitation under this broader construction.

Professor Crouch commented that this “highlights some tension between claim drafting best practices and reliance on subtle differences in claim language during claim construction” because of the claim drafting convention that a new limitation should be introduced using an indefinite article like “a” rather than a definite article like “the” which normally would require an antecedent basis.

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