throbber
IPR2021-00921
`Patent 8,878,949
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`APPLE INC.
`
`Petitioner,
`v.
`GESTURE TECHNOLOGY PARTNERS, LLC
`
`Patent Owner
`__________________
`Inter Partes Review No. IPR2021-00921
`Patent No. 8,878,949
`PATENT OWNER’S RESPONSE TO THE PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,878,949
`
`Filed on behalf of Patent Owner by:
`
`Todd E. Landis (Reg. No. 44,200)
`2633 McKinney Ave., Suite 130
`Dallas, TX 75204
`
`John Wittenzellner (Reg. No. 61,662)
`1735 Market Street, Suite A #453
`Philadelphia, PA 19103
`
`Adam B. Livingston (Reg. No. 79,173)
`601 Congress Avenue, Suite 600
`Austin, TX 78701
`WILLIAMS SIMONS & LANDIS PLLC
`
`
`
`

`

`IPR2021-00921
`Patent 8,878,949
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`TABLE OF CONTENTS
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`
`
`I.
`II.
`
`
`
`INTRODUCTION ........................................................................................... 1
`THE BOARD DOES NOT HAVE JURISDICTION OVER EXPIRED
`PATENTS ........................................................................................................ 1
`PETITIONER’S ASSERTED GROUNDS OF UNPATENTABILITY ........ 3
`III.
`IV. PROCEDURAL HISTORY ……………………………………………….3
`V.
`The ’949 PATENT .......................................................................................... 3
`A. The Technology of the ’949 Patent ........................................................ 3
`B.
`Prosecution History of the ’949 Patent ................................................... 5
`C. Level of Ordinary Skill in the Art .......................................................... 5
`D. Claim Construction ................................................................................. 5
`VI. RESPONSE TO ISSUES RAISED IN THE PETITION ................................ 6
`A. Ground 1 – The Combination of Numazaki and Nonaka Does Not
`Render Obvious Claims 1-18 ................................................................ 6
`1.
`Numazaki and Nonaka do not render independent claim 1
`obvious because they do not teach or suggest claim element
`[1(a)]. ........................................................................................... 6
`
`
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`
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`2.
`
`3.
`
`Numazaki and Nonaka do not render independent claim 1
`obvious because they do not teach or suggest claim element
`[1(b)]. ........................................................................................12
`
`Numazaki and Nonaka do not render independent claim 1
`obvious because they do not teach or suggest claim element
`[1(c)]. .........................................................................................17
`
`4.
`
`Dependent Claims 2, 3, and 5-7 ................................................22
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`Patent 8,878,949
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`5.
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`6.
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`7.
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`8.
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`Dependent Claim 4....................................................................23
`
`Numazaki and Nonaka do not render independent claim 8
`obvious because they do not teach or suggest claim element
`[8(a)]. .........................................................................................24
`
`Numazaki and Nonaka do not render independent claim 8
`obvious because they do not teach or suggest claim element
`[8(b)]. ........................................................................................24
`
`Numazaki and Nonaka do not render independent claim 8
`obvious because they do not teach or suggest claim element
`[8(c)]. .........................................................................................25
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`9.
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`Dependent Claims 9, 10, and 12 ...............................................25
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`10. Dependent Claim 11 .................................................................26
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`11. Numazaki and Nonaka do not render independent claim 13
`obvious because they do not teach or suggest claim element
`[13(a)]. .......................................................................................27
`
`12. Numazaki and Nonaka do not render independent claim 13
`obvious because they do not teach or suggest claim element
`[13(b)]. ......................................................................................27
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`13. Numazaki and Nonaka do not render independent claim 13
`obvious because they do not teach or suggest claim element
`[13(c)]. .......................................................................................28
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`14. Dependent Claims 14-17 ...........................................................28
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`15. Dependent Claim 18…………………………………………..30
`B. Ground 2 – The Combination of Numazaki, Nonaka, and Aviv Does
`Not Render Obvious Claims 6, 12, and 17.......................................... 30
`VII. CONCLUSION ………………………………………………………….30
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`Patent 8,878,949
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`-iv-
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`TABLE OF AUTHORITIES
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`IPR2021-00921
`Patent 8,878,949
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`Cases
`Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC,
` 138 S. Ct. 1365 (2018) .......................................................................................1, 2
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`-v-
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`
`Exhibit
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`2001
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`2002
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`IPR2021-00921
`Patent 8,878,949
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`EXHIBIT LIST
`
`Description
`Claim Construction Memorandum and Order
`
`Declaration of Benedict Occhiogrosso, in Support of Gesture
`
`Technology Partners, LLC’s Patent Owner Response
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`-vi-
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`IPR2021-00921
`Patent 8,878,949
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`I.
`
`INTRODUCTION
`
`Gesture Technology Partners, LLC (“Patent Owner”) respectfully submits this
`
`Response to Apple Inc.’s (“Petitioner”) Petition for Inter Partes Review (“IPR”) No.
`
`IPR2021-00921 (the “Petition” or “Pet.”) of U.S. Patent No. 8,878,949 (the “’949
`
`Patent”).
`
`The Board does not have jurisdiction over the ’949 Patent because it has
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`expired and thus this IPR should be terminated. Further, Petitioner fails to show
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`unpatentability of claims 1-18 of the ’949 Patent (the “Challenged Claim(s)”)
`
`because Petitioner’s Grounds fail to disclose or render obvious one or more elements
`
`of each Challenged Claim.
`
`II. THE BOARD DOES NOT HAVE JURISDICTION OVER EXPIRED
`PATENTS
`
`In Oil States, the Supreme Court explained that the “decision to grant a patent
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`is a matter involving public rights—specifically, the grant of a public franchise.” Oil
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`States Energy Servs., LLC v. Greene's Energy Grp., LLC, 138 S. Ct. 1365, 1373
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`(2018). “Specifically, patents are public franchises that the Government grants to
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`the inventors of new and useful improvements.” Id. (internal quotation marks
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`omitted). The Court explained that “Congress [has] significant latitude to assign
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`[the] adjudication of public rights to entities other than Article III courts.” Id. at
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`1368. In exercising its “significant latitude,” Congress grants public franchises
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`-1-
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`“subject to the qualification that the PTO has the authority to reexamine—and
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`IPR2021-00921
`Patent 8,878,949
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`perhaps cancel—a patent claim in an inter partes review.” Id. at 1368, 1374 (internal
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`quotation marks omitted). Accordingly, so long as the public franchise exists, the
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`PTO may have jurisdiction to amend and cancel the claims of the patent (e.g., via
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`inter partes review).
`
`When a patent expires, however, the public franchise ceases to exist and the
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`franchisee (e.g., the patent owner) no longer has the right to exclude others. At most,
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`the franchisee may be entitled to collect damages from the public franchise that
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`formerly existed through an infringement action in district court. But because the
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`public franchise no longer exists, the PTO has nothing in its authority to cancel or
`
`amend. Expiration removes the patent from the PTO’s jurisdiction and returns it to
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`the sole jurisdiction of the Article III courts, which have exclusive authority to
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`govern claims for damages. If this were not so, the PTO would purport to have
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`authority to retroactively modify a public franchise that no longer exists, in a setting
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`where the expired public franchise does not enjoy any presumption of validity and
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`in which amendment of claims is no longer permitted.
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`The ’949 Patent issued in November 2014 and expired in May 2020, long
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`before the Petition was filed on June 2, 2021. With the expiration of the ’949 Patent
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`in May 2020, the Board ceased to have jurisdiction over the ’949 Patent, and this
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`IPR should be terminated as a result.
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`-2-
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`IPR2021-00921
`Patent 8,878,949
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`III. PETITIONER’S ASSERTED GROUNDS OF UNPATENTABILITY
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`
`Basis
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`Challenged Claims
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`§ 103 (Obviousness)
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`1-18
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`§ 103 (Obviousness)
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`6, 12, and 17
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`Prior Art
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`
`Numazaki and Nonaka
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`Numazaki, Nonaka, and Aviv
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`
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`IV. PROCEDURAL HISTORY
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`Petitioner filed this Petition for Inter Partes Review of the ’949 Patent on June
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`2, 2021. Patent Owner submitted a Preliminary Response to the Petition on
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`September 15, 2021. The Board instituted inter partes review as to the Challenged
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`Claims on the Grounds raised in the Petition.
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`V. The ’949 PATENT
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`A. The Technology of the ’949 Patent
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`The ’949 Patent is entitled “Camera Based Interaction and Instruction.” Ex.
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`1001, Title. The ’949 Patent is directed towards methods and apparatus to “enhance
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`the quality and usefulness of picture taking for pleasure, commercial, or other
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`business purposes.” Id., Abstract. An example camera system is depicted in FIG.
`
`2A, below.
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`-3-
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`
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`Ex. 1001, Fig. 2A. Camera system (201) may include a central camera (202) having
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`“high resolution and color accuracy,” one or more other cameras (210, 211) having
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`a “lower resolution,” and light sources such as LED arrays (240, 245). Id., at 5:1-9,
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`5:27-29. The camera system (210) also includes a computer (220) which “processes
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`the data from cameras 210 and 211 to get various position and/or orientation data
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`concerning” a subject to be photographed. Id., at 5:24-33, 5:45-49. One can use
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`camera system (201) to capture an image of a subject when the “subject undertakes
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`a particular signal comprising a position or gesture” as determined by the computer
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`(220). Id.
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`-4-
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`Prosecution History of the ’949 Patent
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`B.
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`The ‘949 Patent issued from U.S. Patent Application Serial No. 13/961,452
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`IPR2021-00921
`Patent 8,878,949
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`(the “’452 application”), which filed on August 7, 2013. The ’452 application is a
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`continuation of U.S. Patent Application Serial No. 13/459,670 (the “’670
`
`application”), which filed on April 30, 2012. The ’670 application is a continuation
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`of U.S. Patent Application Serial No. 12/891,480 (the “’480 application”), which
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`filed on September 27, 2010. The ’480 application is a continuation of U.S. Patent
`
`Application Serial No. 11/376,158 (the “’158 application”), which filed on March
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`16, 2006. The ’158 application is a continuation of U.S. Patent Application Serial
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`No. 09/568,552 (the “’552 application”), which filed on May 11, 2000. The ‘552
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`application claims priority to U.S. Provisional Patent Application Serial No.
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`60/133,671, which filed on May 11, 1999.
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`
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`C. Level of Ordinary Skill in the Art
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`For the purposes of this Response only, Patent Owner does not dispute the
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`level of skill of a person of ordinary skill in the art (“POSITA”) identified in the
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`Petition.
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`D. Claim Construction
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`Patent Owner does not contest the constructions proposed in the Petition for
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`the purpose of this Response. See Pet., pp. 7-10.
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`-5-
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`IPR2021-00921
`Patent 8,878,949
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`VI. RESPONSE TO ISSUES RAISED IN THE PETITION
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`A. Ground 1 – The Combination of Numazaki and Nonaka Does Not
`Render Obvious Claims 1-18
`
`
`The combination of Numazaki and Nonaka (the “Ground 1 References”) does
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`not render obvious claims 1-18.
`
`1.
`
`Numazaki and Nonaka do not render independent claim 1
`obvious because they do not teach or suggest claim element
`[1(a)].
`
`Claim element [1(a)] recites: “a device housing including a forward facing
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`portion, the forward facing portion of the device housing encompassing an electro-
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`optical sensor having a field of view and including a digital camera separate from
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`the electro-optical sensor.” Petitioner contends that Numazaki teaches or suggests
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`claim element [1(a)]. Pet., pp. 26-29. Patent Owner disagrees.
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`The Petition contends that “[Numazaki’s] ‘reflected light extraction unit 102’
`
`is [the] ‘electro-optical sensor’” as claimed. Pet., p. 28. A POSITA would not
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`interpret “reflected light extraction unit 102” as such. See Ex. 2002, ¶ 44. A portion
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`of Fig. 2 including Numazaki’s “reflected light extraction unit 102” is reproduced
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`below:
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`-6-
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`IPR2021-00921
`Patent 8,878,949
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`
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`Ex. 1004, Fig. 2 (cropped).
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`Petitioner asserts that each of the first “photo-detection unit 109” and the
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`second “photo-detection unit 110” in Numazaki’s “reflected light extraction unit
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`102” is a camera. Pet., p. 11, n. 1 (“A PHOSITA would have considered Numazaki’s
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`photo-detection units to be camera units.”). Further, Petitioner describes operation
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`of Numazaki’s “reflected light extraction unit 102” as follows:
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`A timing control [112] unit is used to turn lighting unit 101 on (i.e.,
`illuminating the target object) when the first camera unit [109] is active
`and off when the second camera unit is active [110] . . . The result of
`this light control is the first camera unit [109] captures an image of the
`target object illuminated by both natural light and the lighting unit 101
`and the second camera unit [110] captures an image of the target object
`illuminated by only natural light . . . The difference between the two
`images—obtained by difference calculation unit 111—[is a “reflected
`light image” that] represents the “reflected light from the object
`resulting from the light emitted by the lighting unit 101.”
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`-7-
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`Pet., p. 12. Because of its “difference calculation unit 111” and its two separate
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`IPR2021-00921
`Patent 8,878,949
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`cameras having specific timing and lighting requirements, a POSITA would not have
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`understood Numazaki’s “reflected light extraction unit 102” as being the “electro-
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`optical sensor” of claim element [1(a)]. See Ex. 2002, ¶ 45. Nonaka does not remedy
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`this deficiency, and the Petition does not so assert. See Pet., pp. 26-29. Accordingly,
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`Petitioner’s contentions do not show that the combination of Numazaki and Nonaka
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`teach or suggest claim element [1(a)].
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`As discussed above, Petitioner contends that Numazaki’s “reflected light
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`extraction unit 102” is the claimed electro-optical sensor. Pet., p. 28. Petitioner also
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`contends that “[Numazaki’s] ‘visible light photo-detection array 351’ is [the] digital
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`camera as claimed.” Id. To meet claim element [1(a)], the Petition contends that
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`Numazaki’s “photo-detection sensor unit 702” in Fig. 74 is or includes one or more
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`of Numazaki’s “reflected light extraction unit 102” and Numazaki’s “visible light
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`photo-detection array 351” (i.e., the claimed electro-optical sensor and digital
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`camera, respectively). Pet., pp. 16 (“Fig. 74 depicts a laptop computer with a
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`lighting unit 701 and camera unit 702”), 17 (“a PHOSITA would have understood
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`that Numazaki’s eighth embodiment portable devices incorporate the controlled
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`lighting and two-camera sensor structure described with respect to the first
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`embodiment”), and 25-29. It does not. See Ex. 2002, ¶ 46.
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`Numazaki is silent regarding the “photo-detection sensor unit” in Fig. 74 as
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`IPR2021-00921
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`
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`being or including one or more of the “reflected light extraction unit 102” and the
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`“visible light photo-detection array 351.” See Ex. 2002, ¶ 47. Numazaki’s “photo-
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`detection sensor unit” appears for the first time in Numazaki’s eighth embodiment.
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`Numazaki generically teaches the “eighth embodiment is directed to a system
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`configuration incorporating the information input generation apparatus of the
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`present invention as described in [embodiments 1-7].” Ex. 1004, 50:21-24. None
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`of embodiments 1-7 in Numazaki mention a “photo-detection sensor unit,” and thus
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`none of embodiments 1-7 teach or suggest the “photo-detection sensor unit” in Fig.
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`74 is or includes one or more of Numazaki’s “reflected light extraction unit 102” and
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`Numazaki’s “visible light photo-detection array 351.” See Ex. 2002, ¶ 47.
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`For example, the information input generation apparatus of Numazaki’s fifth
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`embodiment is reproduced below:
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`-9-
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`IPR2021-00921
`Patent 8,878,949
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`Ex. 1004, Fig. 46 (annotated). As shown, Fig. 46 is devoid of a “photo-detection
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`sensor unit” and Numazaki does not identify any component (or grouping of
`
`components) in Fig. 46 as being the “photo-detection sensor unit.” See Ex. 2002, ¶
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`
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`48.
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`Moreover, the Petition does not explain why a POSITA would understand the
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`“photo-detection sensor unit” in Fig. 74 to be or include both Numazaki’s “reflected
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`light extraction unit 102” and Numazaki’s “visible light photo-detection array 351.”
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`See Ex. 2002, ¶ 49. The mere fact that Numazaki’s eighth embodiment may
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`“incorporate the information input generation apparatus” of Numazaki’s fifth
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`-10-
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`embodiment, Ex. 1004, 50:21-24, does not mean to a POSITA that the “photo-
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`IPR2021-00921
`Patent 8,878,949
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`detection sensor unit” in Fig. 74 is or includes one or more of the “reflected light
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`extraction unit 102” and the “visible light photo-detection array 351” from Fig. 46
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`(i.e., the claimed “electro-optical sensor” and “digital camera,” respectively). See
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`Ex. 2002, ¶ 49. Thus, Numazaki does not teach or suggest claim element [1(a)].
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`Nonaka does not remedy this deficiency, and the Petition does not so assert. See
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`Pet., pp. 25-29.
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`In summary, Numazaki fails to teach any of the following:
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` that the “reflected light extraction unit 102” is an electro-optical sensor;
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` that the “photo-detection sensor unit 702” in Fig. 74 includes a digital
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`camera or a combination of a digital camera and an electro-optical sensor;
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`or
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` that the “photo-detection sensor unit 702” in Fig. 74 includes one or more
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`of “reflected light extraction unit 102” and “visible photo-detection array
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`351” from Fig. 46.
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`See Ex. 2002, ¶ 50. Nonaka does not remedy these deficiencies, and the Petition
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`does not so assert. See Pet., pp. 25-29. For at least these reasons, the Ground 1
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`references fail to teach or suggest claim element [1(a)].
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`IPR2021-00921
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`2.
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`Numazaki and Nonaka do not render independent claim 1
`obvious because they do not teach or suggest claim element
`[1(b)].
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`Claim element [1(b)] recites: “a processing unit within the device housing and
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`operatively coupled to an output of the electro-optical sensor, wherein the processing
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`unit is adapted to: determine a gesture has been performed in the electro-optical
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`sensor field of view based on the electro-optical sensor output.” Petitioner contends
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`that Numazaki teaches or suggests claim element [1(b)]. Pet., pp. 29-30. Patent
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`Owner disagrees.
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`Numazaki discloses an “information input generation apparatus” (“IIGA”).
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`An example of the IIGA is shown in Fig. 2:
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`Ex. 1004, Fig. 2; 5:10-12 (“FIG. 2 is a detailed block diagram of the [IIGA].”). As
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`shown in Fig. 2, the IIGA includes “feature data generation unit 103.” In Numazaki’s
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`-12-
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`third embodiment, the IIGA is configured to be “a gesture camera for recognizing
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`[a] hand action.” Ex. 1004, 29:4-10. This is accomplished by implementing the
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`“feature input generation apparatus” according to Fig. 23 (reproduced below). Id.
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`See also Ex. 2002, ¶ 53.
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`
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`Ex. 1004, Fig. 23 (annotated); 6:4-7 (“FIG. 23 is a schematic block diagram showing
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`an exemplary configuration of a feature data generation unit according to the third
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`embodiment of the present invention.”).
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`In Numazaki’s fifth embodiment, the IIGA is configured to be “a chromakey
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`camera.” Ex. 1004, 39:17-23. This is accomplished by implementing the IIGA from
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`Fig. 2 with a differently designed “feature data generation unit 103” as shown in Fig.
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`46 (reproduced below), and by adding “visible light photo-detection array 351,” as
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`also shown in Fig. 46. See also Ex. 2002, ¶ 54.
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`
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`Ex. 1004, Fig. 46 (annotated).
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`In view of Fig. 23 and Fig. 46, the “feature data generation unit 103” has a
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`different implementation with different specialized units (e.g., extraction unit 353,
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`shape interpretation unit 333) depending on whether the IIGA is configured as “a
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`gesture camera for recognizing [a] hand action,” Ex. 1004, 29:4-10, or as “a
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`chromakey camera.” Ex. 1004, 39:17-23. Numazaki does not disclose that the IIGA
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`can be configured as both a “gesture camera” and a “chromakey camera.” See Ex.
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`2002, ¶ 55.
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`Numazaki’s eighth embodiment includes a laptop. Ex. 1004, Fig. 74.
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`Patent 8,878,949
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`Numazaki discloses the eighth embodiment “is directed to a system configuration
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`incorporating the [IIGA] as described in [embodiments 1-7].” Ex. 1004, 21-25. As
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`discussed above, to meet claim element [1(a)], the Petition requires Numazaki’s
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`eighth embodiment laptop incorporate the IIGA configured as a chromakey camera.
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`Pet., pp. 25-29. Now, to meet claim element [1(b)], the Petition requires Numazaki’s
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`eighth embodiment laptop incorporate the IIGA configured as a gesture camera.
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`Pet., pp. 29-30. In other words, to meet both claim elements [1(a)] and [1(b)], the
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`Petition requires that Numazaki’s eighth embodiment laptop incorporate an IIGA
`
`configured as both a gesture camera and a chromakey camera. But, as discussed
`
`above, Numazaki fails to disclose such an IIGA. See Ex. 2002, ¶ 56.
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`Numazaki does not disclose an embodiment of an IIGA with both “reflected
`
`light extraction unit 102” and a separate “visible light photo-detection array” that
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`includes a “feature data generation unit” that performs both gesture detection and
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`chromakey image capture functionality. See Ex. 2002, ¶ 57. Petitioner’s contentions
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`require generating a new embodiment that has all the hardware and software from
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`Numazaki’s third and fifth embodiments. This new embodiment would require a
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`new “feature data generation unit 103” that has “shape memory unit 332” and “shape
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`interpretation unit 333” from Numazaki’s third embodiment, Ex. 1004, Fig. 23, and
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`the “image memory unit 352,” “extraction unit 353,” “extracted image memory unit
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`-15-
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`354,” “extracted image (compression) recording unit 355,” “(compression)
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`transmission unit 356,” “background image memory unit 358,” and “image
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`composition unit 357” from Numazaki’s fifth embodiment, Ex. 1004, Figs. 46, 49,
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`50, and 52. See Ex. 2002, ¶ 57.
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`Petitioner does not explain how the “reflected light image” from the “reflected
`
`light extraction unit 102” would be accessed by both “shape interpretation unit 333”
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`from the third embodiment and “extraction unit 353” from the fifth embodiment.
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`Petitioner does not explain how
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`these specialized units would operate
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`simultaneously or whether different units would operate at different times or what
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`that timing functionality would require. See Ex. 2002, ¶ 58. Again, Numazaki
`
`discloses the “eighth embodiment is directed to a system configuration incorporating
`
`the information input generation apparatus of the present invention as described in
`
`[embodiments 1-7].” Ex. 1004, 50:21-24. This does not mean that Numazaki’s third
`
`and fifth embodiments are combinable. This also does not mean that Numazaki’s
`
`third and fifth embodiments can both be simultaneously incorporated into
`
`Numazaki’s eighth embodiment laptop. See Ex. 2002, ¶ 58.
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`In fact, Numazaki discloses 14 embodiments over 80 columns of specification
`
`and 105 figures but never discloses an embodiment that uses the feature data
`
`generation unit of the first embodiment that has the gesture camera for recognizing
`
`hand action of the third embodiment and the chromakey camera for extracting only
`
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`a specific target of the fifth embodiment. See Ex. 2002, ¶ 59. Even having all of
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`IPR2021-00921
`Patent 8,878,949
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`their knowledge, the inventors in Numazaki never disclose such an embodiment. But
`
`now having the benefit of the claims of the ’949 Patent, the Petitioner uses
`
`impermissible hindsight to combine and merge various disparate embodiments from
`
`Numazaki in a manner Numazaki never contemplated. See Ex. 2002, ¶ 59. Such a
`
`new embodiment would not have been obvious to a POSITA especially given the
`
`inventors in Numazaki did not recognize it as a viable embodiment. See Ex. 2002, ¶
`
`59.
`
`Thus, a POSITA would not find it obvious to modify Numazaki to meet both
`
`claim elements [1(a)] and [1(b)]. Nonaka does not remedy these deficiencies, and
`
`the Petition does not so assert. See Pet., pp. 25-30. For at least these reasons, the
`
`Ground 1 references fail to teach or suggest claim element [1(b)]. See Ex. 2002, ¶
`
`60.
`
`3.
`
`Numazaki and Nonaka do not render independent claim 1
`obvious because they do not teach or suggest claim element
`[1(c)].
`
`Claim element [1(c)] recites “control the digital camera in response to the
`
`gesture performed in the electro-optical sensor field of view, wherein the gesture
`
`corresponds to an image capture command, and wherein the image capture command
`
`causes the digital camera to store an image to memory.” The Petition contends that
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`

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`the combination of Numazaki and Nonaka teaches or suggests claim element [1(c)].
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`IPR2021-00921
`Patent 8,878,949
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`Pet., pp. 20-21, 31-33. It does not. See Ex. 2002, ¶ 61.
`
`The Petition argues:
`
`[A] PHOSITA would have been motivated to implement this gesture
`recognition [of Numazaki’s third embodiment] as a means of allowing
`the user to initiate (or turn on) [Numazaki’s] fifth embodiment’s
`videoconferencing functionality. Specifically, pursuant to Nonaka’s
`teachings, the user experience would be improved by allowing users to
`position themselves in place before the video camera and initiate video
`capture through a gesture, rather than a physical input or timer
`mechanism.
`
`Pet, p. 31 (emphasis added). Patent Owner disagrees. Numazaki’s fifth embodiment
`
`discloses extracting faces of speaking persons for transmission via a “TV telephone.”
`
`Ex. 1004, 39:5-16. The Petition requires Numazaki’s fifth embodiment be
`
`incorporated into the laptop of Numazaki’s eighth embodiment. Pet., pp. 25-29.
`
`Accordingly, following Petitioner’s various modifications to Numazaki, Numazaki’s
`
`laptop includes a TV telephone feature. A POSITA would recognize that to dial the
`
`telephone number, the user must physically interact with Numazaki’s laptop (e.g.,
`
`keyboard), and thus the user would already be positioned “in place” for the
`
`videoconference. See Ex. 2002, ¶ 62. It would be redundant to require the user to
`
`then perform a gesture signaling that the user is “in place” because such is already
`
`known to the laptop by virtue of the physical interactions. See Ex. 2002, ¶ 62. Thus,
`
`there is no motivation to modify Numazaki based on the teachings of Nonaka.
`
`-18-
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`

`

`Moreover, a POSITA would not even find the teachings of Nonaka useful to
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`IPR2021-00921
`Patent 8,878,949
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`
`
`the scenario in Numazaki. See Ex. 2002, ¶ 63. Nonaka’s teachings and their alleged
`
`benefits apply when the subject of the photograph must stand beyond reach of the
`
`camera to take a photograph. This is shown in Fig. 3 (reproduced below):
`
`
`
`Ex. 1005, Fig. 3 (annotated). Here, the subject “gives a release instruction by means
`
`of a predetermined motion towards the camera” to trigger the photograph. Ex. 1005,
`
`p. 3. Thus, in Nonaka’s system, the subject can photograph themselves without the
`
`need for a timer or a remote control. In contrast, a POSITA would recognize that a
`
`user would be within reach of Numazaki’s laptop before and during a
`
`videoconference enabled by Numazaki’s laptop. In fact, the user would likely be
`
`sitting at a desk in front of Numazaki’s laptop before and during the teleconference.
`
`The user in Numazaki would not find himself in the same situation as Nonaka’s
`
`subject and thus would not require this feature of Nonaka. See Ex. 2002, ¶ 63.
`
`-19-
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`

`

`Further, the Petition contends that the motivations to combine Numazaki’s
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`IPR2021-00921
`Patent 8,878,949
`
`
`
`third, fifth, and eighth embodiments with the teachings of Nonaka are “a higher
`
`degree of freedom, good portability, and cost benefits,” as taught by Nonaka. Pet.,
`
`p. 21; Ex. 1003, ¶ 49. Patent Owner disagrees. Nonaka teaches that “a higher degree
`
`of freedom, good portability, and cost benefits” are the results of not needing a
`
`remote-control unit to operate a camera. Ex. 1005, p. 2 (“remote control device-
`
`equipped camera requires both a transmitter and a receiver, making the configuration
`
`complex and raising costs . . . camera body becomes that much larger.”) (emphasis
`
`added). In contrast, Numazaki is completely silent regarding the existence of
`
`remote-control units and the use of remote-control units to operate a camera.
`
`Accordingly, the Petition’s stated motivations for combining Numazaki and Nonaka
`
`correspond to solving problems (i.e., the disadvantages of a camera with a remote-
`
`control unit) that Numazaki never had in the first place. See Ex. 2002, ¶ 64.
`
`Further, the Petition contends that the motivations for combining Numazaki’s
`
`third, fifth, and eighth embodiments with the teachings of Nonaka are to “provide a
`
`greater degree of freedom than alternative means of trigger image capture such as
`
`timers . . . ensuring the user is able to get in position and prepared before the video
`
`capture begins.” Pet., pp. 21-22. The Petition, however, fails to explain why
`
`gesture-based image capture initiation provides “a greater degree of freedom” than
`
`timers, especially when a timer can be set for any length of time, giving the user
`
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`

`
`whatever time is needed to get into position and get prepared for the video capture.
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`IPR2021-00921
`Patent 8,878,949
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`Id. See also Ex. 2002, ¶ 65. The alleged support from the Bederson declaration is
`
`conclusory, and provides no additional insight as to why gesture-based image
`
`capture initiation is purportedly superior to timers. See Ex. 1003, ¶ 49.
`
`Further, the Petition contends that a POSITA would anticipate success in
`
`combining Numazaki’s third, fifth, and eighth embodiments with the teachings of
`
`Nonaka. Pet., pp. 23-25. Patent Owner disagrees. The Petition states:
`
`[T]he third embodiment uses Numazaki’s two-sensor reflected light
`extraction unit 102 to recognize hand-based gestures . . . The fifth
`embodiment uses the same two-sensor reflected light extraction unit
`102 and adds a third ‘visible light photo-detection array’ that serves as
`a video camera . . . a PHOSITA would have recognized [that
`Numazaki’s laptop] includes at least the two-sensor reflected light
`extraction unit 102 and gesture recognition functionality . . . A
`PHOSITA would have understood that adding a third image sensor to
`[Numazaki’s] laptop in support of the fifth embodiment’s video capture
`functionality would have been straightforward and well within the skill
`set of a PHOSITA.
`
`Pet. p. 24 (emphasis added). The Petition seems to argue that the only difference
`
`between Numazaki’s third embodiment (gesture detection) and Numazaki’s fifth
`
`embodiment (TV telephone) is the addition of a “video light photo-detection array”
`
`and
`
`thus combining Numazaki’s
`
`third and fifth embodiments would be
`
`“straightforward.” But as discussed above, Numazaki’s third and fifth embodiments
`
`have different implementations of “feature data generation unit 103” with different
`
`specialized units. Accordingly, combining Numazaki’s third and fifth embodiments
`
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`

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`entails much more than merely adding a video camera to Numazaki’s third
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`IPR2021-00921
`Patent 8,878,949
`
`embodiment. See Ex. 2002, ¶ 66. A POSITA would not recognize the combination
`
`as being straightforward and thus a POSITA could not anticipate success.
`
`Moreover, to show anticipation of success by a POSITA, the Petition relies
`
`on Numazaki’s teachings that gestures may be used to power on/off home electronic
`
`appliances. Pet., p. 24; Ex. 1004, 31:7-10, 35-44. A POSITA would recognize that
`
`merely powering-on an appliance (e.g., camera) is different than invoking one of the
`
`device’s many functions (e.g., image capture). See Ex. 2002, ¶ 67. Accordingl

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