UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC.
`Petitioner
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`v.
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`GESTURE TECHNOLOGY PARTNERS LLC
`Patent Owner
`___________
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`
`
`Case No. IPR2021-00921
`U.S. Patent No. 8,878,949
`____________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................ 1
`I.
`II. ARGUMENT ................................................................................................ 3
`A. NUMAZAKI TEACHES THE CLAIMED “ELECTRO-OPTICAL SENSOR” .................... 3
`B. PATENT OWNER MISCHARACTERIZES THE PROPOSED COMBINATION AND
`IGNORES NUMAZAKI’S TEACHINGS .................................................................. 4
`C. PATENT OWNER IDENTIFIES NO TECHNICAL BARRIERS TO IMPLEMENTING
`BOTH GESTURE RECOGNITION AND VIDEOCONFERENCE FUNCTIONALITIES IN
`NUMAZAKI’S LAPTOP ....................................................................................... 6
`1. Patent Owner identifies no technical barriers to implementing the
`proposed combination ............................................................................... 7
`2. Patent Owner again mischaracterizes the proposed combination—the
`petition did not suggest that Numazaki expressly combines its
`embodiments .............................................................................................. 9
`3. It is of no moment that Numazaki describes the relevant functionalities
`in separate embodiments ......................................................................... 10
`D. PATENT OWNER’S MOTIVATION TO COMBINE CRITIQUES MISCHARACTERIZE
`THE PETITION AND IGNORE EXPRESS TEACHINGS IN THE PRIOR ART ............... 11
`1. Patent Owner ignores the benefit of initiating video capture from
`beyond the reach of Numazaki’s laptop .................................................. 11
`
`2. As the Board found at institution, Nonaka’s benefit does not turn on
`replacing a remote control ...................................................................... 14
`3. Patent Owner ignores that Nonaka express teaches that gestures
`provide greater flexibility than timers ..................................................... 15
`4. Patent Owner mischaracterizes the Petition’s proposed modification ... 16
`5. Patent Owner’s expert entirely fails to explain why a gesture to power
`on a device is materially different from a gesture to initiate image
`capture ..................................................................................................... 18
`E. NUMAZAKI’S UNIT 102 IS FIXED IN RELATION TO CAMERA 351 ...................... 19
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`i
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`IPR2021-00921
`U.S. Patent No. 8,878,949
`F. THE BOARD HAS JURISDICTION TO REVIEW EXPIRED PATENTS ....................... 20
`III. CONCLUSION ........................................................................................... 22
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`ii
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`I.
`
`INTRODUCTION
`The Challenged Claims are directed to a portable device with a two optical
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`IPR2021-00921
`U.S. Patent No. 8,878,949
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`sensors mounted in a forward facing portion—(1) a gesture-detecting electro-optical
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`sensor and (2) a digital camera. Using this arrangement, when the electro-optical
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`sensor detects that the user performs a predetermined gesture, the system causes the
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`digital camera to store an image to memory. Petitioner refers to this functionality
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`herein as an “image capture gesture.”
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`The Petition is based primarily on a combination of Numazaki (Ex. 1004) and
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`Nonaka (Ex. 1005). Numazaki includes three key teachings relevant to the proposed
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`ground. Its third embodiment teaches a gesture camera for detecting that a user has
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`performed preregistered gestures or hand positions and converting those gestures
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`into commands such as turning on/off appliances or other equipment. Paper 1, 12-
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`13. In its fifth embodiment, Numazaki describes a videoconferencing functionality
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`that uses some of the same hardware as its third embodiment to reduce the bandwidth
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`of a video stream by removing extraneous background information from the feed.
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`Id. at 14-15. Finally, Numazaki’s eighth embodiment describes various portable
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`computers such as laptops in which the earlier-described functionalities may be
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`implemented. Id. at 16-17.
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`Nonaka teaches a “remote release device-equipped camera” that allows a user
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`1
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`IPR2021-00921
`U.S. Patent No. 8,878,949
`to signal a desire for the camera to take a picture by “mak[ing] a predetermined
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`motion.” IdI at 18 (quoting Ex. 1005, 15:11-14). Nonaka contemplates multiple
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`predetermined gestures such as holding one’s hand out toward the camera (as
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`depicted in Fig. 3 below left) or moving one’s hand toward the camera (as depicted
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`in Fig. 7 below right):
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`
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`Id. at 18-19 (citing Ex. 1005, Figs. 3, 7, 3:34-4:4). Nonaka explains that its image
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`capture gestures improve upon existing remote trigger options such as timers and
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`remote controls, “achieving a higher degree of freedom, good portability, and cost
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`benefits.” Ex. 1005, 2:6-29.
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`The Petition establishes that a POSITA would have been motivated, pursuant
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`to Nonaka’s teachings, to combine Numazaki’s embodiments in a single portable
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`device such that a user could perform a gesture command (pursuant to its third
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`embodiment) that causes video capture to initiate (pursuant to its fifth embodiment).
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`Paper 1, 20-25.
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`2
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`U.S. Patent No. 8,878,949
`The Patent Owner Response (“POR” or “Paper 10”) advances numerous
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`arguments that the Board correctly rejected at institution, providing the Board no
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`reason to modify its preliminary findings. The POR also repeatedly mischaracterizes
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`the proposed ground, incorrectly suggesting that the Petition turned on Numazaki
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`expressly disclosing a combination of its third and fifth embodiments. Finally, the
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`POR advances numerous critiques of the Petition’s motivation to combine, which
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`mischaracterize the Petition, ignore express teachings in the prior art, and/or were
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`correctly rejected by the Board at institution.
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`II. ARGUMENT
`A. Numazaki teaches the claimed “electro-optical sensor”
`In its Preliminary Response, Patent Owner argued that Numazaki’s gesture
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`detection structure fails to satisfy the claimed “electro-optical sensor” recited in
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`limitations [1(a)] and [1(b)] because it uses two cameras, a lighting unit, and a
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`difference calculation unit to obtain an image of the gesture that is the difference
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`between two images, rather than the output of one. Paper 6, 10-12. At institution, the
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`Board correctly rejected this argument. It first noted that the “claim 1 employs the
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`open-ended language ‘comprising,’ and thus does not preclude additional elements.”
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`Paper 8, 17. For this reason, the Board concluded that “claim 1 does [not] preclude
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`determining that a gesture has been performed based on the output of more than one
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`electro-optical sensor. Nor does claim 1 preclude additional hardware such as a
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`3
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`lighting unit, image subtraction circuitry, and timing circuitry.” Id.
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`The POR provides no reason for the Board to modify its preliminary
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`conclusions. It presents shorter, but substantively identical arguments to those the
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`Board rejected at institution. Paper 10, 6-8 (advancing the same argument with
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`reference to limitation [1(a)] and concluding, “[b]ecause of its ‘difference
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`calculation unit 111’ and its two separate cameras having specific timing and lighting
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`requirements, a POSITA would not have understood Numazaki’s ‘reflected light
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`extraction unit 102’ as being the ‘electro-optical sensor’ of claim element [1(a)]”). The
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`POR newly cites to Mr. Occhiogrosso’s declaration, but he merely parrots the POR’s
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`arguments with no elaboration. Compare Paper 10, 6-8, with Ex. 2002, ¶ 45.
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`Accordingly, the Board should make its preliminary finding on this point final.
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`B.
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`Patent Owner mischaracterizes the proposed combination and
`ignores Numazaki’s teachings
`Patent Owner next mischaracterizes the proposed combination, attempting to
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`manufacture a deficiency where none exists. Namely, the POR argues that the
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`Petition is premised on Numazaki expressly teaching that the eighth embodiment
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`laptop’s “‘reflected light extraction unit 102’ in Fig. 74 is or includes one or more
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`of” the “reflected light extraction unit 102” and “visible light photo-detection array
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`351” from Numazaki’s fifth embodiment. Paper 10, 8 (emphasis added). With its
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`straw man erected, Patent Owner proceeds to dispute it by demonstrating that
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`Numazaki does not expressly teach incorporating the fifth embodiment components
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`4
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`in the eighth embodiment laptop. Id. at 9 (“Numazaki is silent regarding the “photo-
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`detection sensor unit” in Fig. 74 as being or including one or more of the “reflected
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`light extraction unit 102” and the “visible light photo-detection array 351.”), 10
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`(“[T]he Petition does not explain why a POSITA would understand the “photo-
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`detection sensor unit” in Fig. 74 to be or include both Numazaki’s “reflected light
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`extraction unit 102” and Numazaki’s “visible light photo-detection array 351.”), 11
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`(“Numazaki fails to teach . . . that the “photo-detection sensor unit 702” in Fig. 74
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`includes one or more of “reflected light extraction unit 102” and “visible photo-
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`detection array 351” from Fig. 46.”).
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`The Petition did not suggest, nor does it depend on, Numazaki expressly
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`teaching that the eighth embodiment’s laptop includes the fifth embodiment’s
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`components. Indeed, the Petition’s mapping for limitation [1(a)] begins, “a
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`PHOSITA would have been motivated to implement the fifth embodiment’s
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`videoconference functionality in the eighth embodiment’s laptop device.” Paper 1,
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`26; see also id. at 26-29 (explaining that a POSITA would have been motivated to
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`implement the fifth embodiment’s unit 102 and camera 351 in the eighth
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`embodiment’s laptop). At institution, the Board expressly acknowledged that the
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`Petition turned on a POSITA’s motivation to combine these embodiments, rather
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`than Numazaki expressly combining them:
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`Petitioner argues that one of ordinary skill in the art would have been
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`5
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`U.S. Patent No. 8,878,949
`the videoconference functionality of
`implement
`to
`motivated
`Numazaki’s fifth embodiment
`into
`the
`laptop of
`the eighth
`embodiment. Pet. 26. To accomplish this implementation, Petitioner
`argues that Numazaki’s two-camera reflected light extraction unit 102
`would have been used in conjunction with visible photo-detection array
`351.
`Paper 8, 15. Accordingly, the Board should reject Patent Owner’s straw man
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`argument that the Petition depends on Numazaki expressly teaching that its eighth
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`embodiment laptop includes the fifth embodiment imaging components.
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`C.
`
`Patent Owner identifies no technical barriers to implementing both
`gesture recognition and videoconference
`functionalities
`in
`Numazaki’s laptop
`As described above, the Petition proposes a POSITA would have been
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`motivated by Nonaka’s teachings to implement in Numazaki’s eighth embodiment
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`laptop, gesture recognition from Numazaki’s third embodiment as a means to initiate
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`a videoconference functionality as described in Numazaki’s fifth embodiment. As
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`the Petition explains, both the third embodiment and the fifth embodiment use the
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`same two-camera “reflected light extraction unit 102” from Numazaki’s first
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`embodiment. Paper 1, 12-15. In the third embodiment, the output from unit 102 is
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`compared to “data reflecting pre-registered gestures or hand positions,” enabling the
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`system to “identify when the user has performed a pre-registered gesture and
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`instructs the device to implement a ‘command corresponding to that [gesture].’” Id.
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`at 12-13 (quoting Ex. 1004, 29:22-30:5). The fifth embodiment adds a separate video
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`6
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`camera (“visible light photo-detection array 351”). The outputs from unit 102 and
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`camera 351 are processed together to generate a video stream that “contains only the
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`subject without any background image information and uses much less data as a
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`result of removing the extraneous image information.” Id. at 14-15.
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`Patent Owner advances three distinct arguments against the Petition’s
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`proposal to combine Numazaki’s gesture recognition and videoconference
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`functionality in a laptop, each of which fails to engage the relevant issues.
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`1. Patent Owner identifies no technical barriers to implementing the
`proposed combination
`In its Preliminary Response, Patent Owner argued, “while both the third
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`embodiment and the fifth embodiment employ reflected light extraction unit 102,
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`reflected light extraction unit 102 operates differently depending on the embodiment
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`that is being implemented.” Paper 6, 13. The Board correctly rejected this at
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`institution, noting “[w]e do not read the Petition as proposing to modify Numazaki’s
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`reflected light extraction unit 102 so as to generate” different outputs for the third
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`and fifth embodiments. Paper 8, 18.
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`Patent Owner modifies its argument in the POR, newly focusing on the fact
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`that the proposed combination requires the output of reflected light extraction unit
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`102 be processed by (1) the third embodiment’s feature data generation unit when
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`detecting gestures and (2) the fifth embodiment’s feature data generation unit when
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`implementing videoconference functionality. Paper 10, 12-16.
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`7
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`Citing Dr. Bederson’s testimony, the Petition establishes that a POSITA
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`would have been motivated to implement (and capable of implementing) the
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`processing components of both the third and fifth embodiments in Numazaki’s
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`eighth embodiment laptop. Paper 1, 20-25. Neither Patent Owner nor its expert
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`identify any technical barriers to doing so. They don’t argue that the gesture
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`recognition and videoconference processing blocks could not separately process the
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`output of reflected light extraction unit 102. Nor do they suggest any reason why
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`they would not separately process the output of reflected light extraction unit 102.
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`Instead, Patent Owner and its expert argue that the Petition “does not explain how
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`these specialized units would operate simultaneously or whether different units
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`would operate at different times or what that timing functionality would require.”
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`Paper 10, 16 (citing Ex. 2002, ¶ 58).
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`This ignores the entire premise of the combination, which proposes the third
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`embodiment is used as a trigger mechanism to initiate the fifth embodiment, setting
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`forth precisely the timing relationship that Patent Owner demands:
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`Numazaki’s third embodiment detects when a user has performed a pre-
`registered gesture and instructs the device to implement a “command
`corresponding to that [gesture].” Numazaki (Ex. 1004), 29:22-30:5. As
`discussed in the Motivation to Combine section above, a PHOSITA
`would have been motivated to implement this gesture recognition as a
`means of allowing the user to initiate (or turn on) the fifth
`embodiment’s videoconferencing functionality.
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`
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`8
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`IPR2021-00921
`U.S. Patent No. 8,878,949
`Paper 1, 31 (emphasis added). Accordingly, in the proposed combination, the gesture
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`detecting functionality of the third embodiment is employed until an image capture
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`gesture is detected. Then, the system transitions into Numazaki’s videoconferencing
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`functionality. Dr. Bederson confirms that the proposed combination utilizes the
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`gesture detecting processing of the third embodiment and the videoconference
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`processing of the fifth embodiment separately and sequentially. Ex. 1018, ¶¶ 3-9
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`(noting that the output of reflected light extraction unit 102 would be processed by
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`the third embodiment’s gesture detecting block until an image capture gesture is
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`detected and would then be processed by the fifth embodiment’s videoconferencing
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`block). He also confirms that the output of reflected light extraction unit 102 would
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`not be processed by both the third embodiment and the fifth embodiment blocks at
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`the same time. Id. (explaining that it would be well within the capabilities of a
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`POSITA to utilize the same output by two separate processing blocks to implement
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`the proposed combination).
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`2. Patent Owner again mischaracterizes the proposed combination—the
`petition did not suggest that Numazaki expressly combines its
`embodiments
`The POR dedicates many pages to establish that Numazaki does not expressly
`
`teach combining the third and fifth embodiments in Numazaki’s laptop. Paper 10,
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`12-14 (explaining “Numazaku does not disclose that the IIGA can be configured
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`both as a ‘gesture camera’ and a ‘chromakey camera.’”), 15 (noting Numazaki fails
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`
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`9
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`IPR2021-00921
`U.S. Patent No. 8,878,949
`to disclose a laptop that incorporates “both a gesture camera and a chromakey
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`camera”). As discussed in Section II.B above, the Petition did not suggest, nor does
`
`it depend on, Numazaki expressly teaching that the eighth embodiment’s laptop
`
`includes the fifth embodiment’s components. Instead, as the Board recognized at
`
`institution (Paper 8, 13), the Petition turns on a POSITA having been motivated to
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`implement Numazaki’s third and fifth embodiments in its eighth embodiment laptop
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`pursuant to Nonaka’s image capture gesture teachings.
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`3. It is of no moment that Numazaki describes the relevant functionalities
`in separate embodiments
`Patent Owner next argues that combining Numazaki’s embodiments as
`
`proposed would not have been obvious to a POSITA because Numazaki never
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`expressly describes a single embodiment that combines these features. Paper 10, 16-
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`17 (arguing the Petition uses impermissible hindsight and citing Ex. 2002, ¶ 59,
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`which parrots the POR language with no additional analysis). Tellingly, Patent
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`Owner cites no authority for this novel take on obviousness.
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`In Bos. Sci. Scimed, Inc. v. Cordis Corp., the Federal Circuit rejected Patent
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`Owner’s argument, finding two separate embodiments in a prior art reference
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`rendered obvious the challenged claim where “one of ordinary skill in the art would
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`have been motivated to combine” them. 554 F.3d 982, 991 (Fed. Cir. 2009). The
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`court noted that, where relevant teachings are contained in separate embodiments,
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`“[i]f a person of ordinary skill can implement a predictable variation, § 103 likely
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`
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`10
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`U.S. Patent No. 8,878,949
`bars its patentability.” Id. (quoting KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416
`
`(2007)).
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`D.
`
`Patent Owner’s motivation to combine critiques mischaracterize
`the Petition and ignore express teachings in the prior art
`Patent Owner next advances numerous criticisms of the Petition’s motivation
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`to combine Numazaki and Nonaka. Paper 10, 17-22. Addressed in turn below, many
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`of these arguments were properly rejected by the Board at institution, and the
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`remainder mischaracterize the Petition and/or ignore express teachings in the prior
`
`art.
`
`1. Patent Owner ignores the benefit of initiating video capture from
`beyond the reach of Numazaki’s laptop
`Patent Owner first takes issue with the Petition’s premise that Numazaki’s
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`videoconference functionality “would be improved by allowing users to position
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`themselves in place before the video camera and initiate video capture through a
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`gesture, rather than a physical input or timer mechanism.” Paper 10, 18-19 (quoting
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`Paper 1, 31). It argues that a user of Numazaki’s videoconference system would be
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`“within reach of Numazaki’s laptop before and during a videoconference” and
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`would, accordingly, have no need for an image capture gesture to initiate image
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`capture. Id. (emphasis added).
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`As an initial matter, this theory ignores the premise of the proposed
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`combination, which is directed to scenarios in which the user would not be within
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`
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`11
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`U.S. Patent No. 8,878,949
`reach of the laptop and proffers gestures as a beneficial means of triggering image
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`capture. Paper 1, 21-22 (explaining that Numazaki’s device would benefit from
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`Nonaka’s “ability to remotely trigger image capture” and citing Ex. 1003, ¶ 49,
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`which explains this modification allows the user “to get in position and prepared
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`before the video capture begins”) (emphasis added).
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`In support, Patent Owner cites only Mr. Occhiogrosso who argues that,
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`because a user has to physically interact with the laptop to dial a telephone number,
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`that “user would already be positioned ‘in place’ for the videoconference” and would
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`have no need for the proposed gesture initiation. Ex. 2002, ¶ 62. Mr. Occhiogrosso
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`does not explain why a user would necessarily stay within reach of the laptop for the
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`entire videoconference and does not wrestle with the Petition’s premise that there
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`are scenarios in which the user is not within reach of the laptop when the
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`videoconference is to begin. Instead, he simply concludes that because the user must
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`physically interact with the laptop before the videoconference begins, that user
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`would never move and would remain “within reach of Numazaki’s laptop before and
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`during a videoconference.” Id. at ¶ 63 (emphasis added).
`
`Mr. Occhiogrosso is wrong. A POSITA would have understood there are
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`countless examples of videoconference scenarios in which the user would not be
`
`sitting in front of the laptop and able to initiate image capture through physical
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`control. Ex. 1018, ¶¶ 10-11 (identifying examples such as a lecture in which the
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`12
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`lecturer is standing, rather than seated, and a tutorial in which the speaker is
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`demonstrating the use of a product that requires a broader field of view than
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`remaining seated before the camera). Indeed, Numazaki’s Fig. 48, which illustrates
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`the fifth embodiment videoconference functionality, illustrates a videoconference
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`participant who is standing at a distance from the camera:
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`
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`Ex. 1004, Fig. 48; Ex. 1018, ¶¶ 10-11 (explaining that a POSITA would have
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`understood that the person illustrated in Fig. 48 is not seated before the camera and
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`would not be close enough to physically control the camera). Accordingly, Patent
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`Owner and its expert are wrong that simply because a user may interact with the
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`13
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`laptop before the videoconference begins, that user will necessarily remain within
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`physical reach of the laptop throughout the process. Id. (reiterating that there are
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`benefits to allowing a user to position themselves beyond reach of the laptop before
`
`initiating image capture in a videoconference).
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`2. As the Board found at institution, Nonaka’s benefit does not turn on
`replacing a remote control
`Patent Owner next re-raises an argument the Board correctly rejected at
`
`institution. Namely, it notes that Nonaka’s benefits “are the results of not needing a
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`remote-control unit to operate a camera” and then argues that these benefits don’t
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`apply to Numazaki because Numazaki never describes using a remote control. Paper
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`10, 20; see also Paper 6, 15 (advancing same argument in POPR). At institution, the
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`Board correctly rejected that Nonaka’s disclosure “would have only suggested to
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`one of ordinary skill in the art replacing a remote control unit with gesture-based
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`image capture functionality,” finding it reasonable to conclude Nonaka’s technique
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`was “desirable . . . for triggering image capture in general.” Paper 8, 20. The Board
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`further noted that the Petition at 21 “relies on Nonaka as teaching the desirability of
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`remotely triggering image capture and using gesture-based image capture
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`functionality to do so.” Id. Finally, the Board correctly noted that the combination is
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`supported by Dr. Bederson’s testimony that a POSITA would have recognized that
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`“Numazaki’s native functionality of associating hand gestures with commands
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`14
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`IPR2021-00921
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`would have been a natural fit as a means to initiate video capture.” Id. (citing Ex.
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`1003, ¶ 49.
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`The POR provides no reason for the Board to modify its preliminary
`
`conclusions. It POR newly cites to Mr. Occhiogrosso’s declaration, but he merely
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`parrots the POR’s arguments with no elaboration. Compare Paper 10, 20, with Ex.
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`2002, ¶ 64. Accordingly, the Board should make its preliminary finding on this point
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`final.
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`3. Patent Owner ignores that Nonaka express teaches that gestures
`provide greater flexibility than timers
`Patent Owner next argues that the Petition fails to explain why gesture-based
`
`image capture initiation provides greater freedom than timers, criticizing Dr.
`
`Bederson for failing to provide “additional insight as to why gesture-based image
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`capture initiation is superior to timers.” Paper 10, 20-21.
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`As an initial matter, Petitioner did not fail to support the benefit of gestures
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`over timers. As set forth in the Petition, this is express teaching in Nonaka:
`
`Nonaka explains that users desired the ability to remotely trigger image
`capture, but that then-existing options were limited to self-timer
`mechanisms and expensive wireless remote controls—both of which
`were undesirable. Nonaka (Ex. 1006), 2:6-25. According to Nonaka, its
`gesture-based image capture solution “achiev[es] a higher degree of
`freedom, good portability, and cost benefits.” Id. at 2:26-29.
`Paper 1, 21.
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`15
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`Even setting aside that Nonaka expressly teaches its gesture-based solution
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`improves upon timers, a POSITA would have agreed that it is in fact an improvement
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`and would have been motivated to implement Nonaka’s gesture-based solution with
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`or in lieu of timers. Ex. 1018, ¶ 12. As Dr. Bederson explained in his initial
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`declaration, the goal of initiating image capture from a remote position is “ensuring
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`the user is able to get in position and prepared before the video capture begins.” Ex.
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`1003, ¶ 49. A POSITA would have understood that self-timers are imprecise tools
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`for this application. Ex. 1018, ¶ 12. Without knowing precisely how long a user will
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`need to be in position and ready to initiate image capture, self-timers force the user
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`to over-estimate the required time, leading to frustrating waiting periods in which
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`the user is ready, but is forced to wait out the remainder of the timer period. Id.
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`Nonaka’s gesture-based initiation allows the user to take all the time necessary to
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`get in position and permits initiating image capture as soon as the user is ready,
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`avoiding the frustrating waiting period associated with timers. Id.
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`4. Patent Owner mischaracterizes the Petition’s proposed modification
`Patent Owner next mischaracterizes the Petition as “seem[ing] to argue that
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`the only difference between Numazaki’s third embodiment [] and Numazaki’s fifth
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`embodiment [] is the addition of” camera 351. Paper 10, 21 (noting the Petition
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`emphasized that both embodiments use the same reflected light extraction unit 102).
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`From this mischaracterization, the POR argues that the proposed combination is
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`more complex than the Petition acknowledged and that a POSITA could not have
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`anticipated success. Id. at 21-22.
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`First, Patent Owner is wrong that the Petition over-simplified the
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`combination. The Petition accurately describes how the third embodiment processes
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`the output of unit 102 to detect gestures and convert them into commands. Paper 1,
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`12-14. It also accurately describes how the fifth embodiment processes the outputs
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`of unit 102 and camera 351 to produce a bandwidth-reduced video stream. Id. at 14-
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`15. The Petition then explains that a POSITA would have expected success
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`incorporating “programming necessary to detect gestures, associate gestures with
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`commands, and capture video, and expressly contemplates incorporating these early-
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`described embodiments in the eighth embodiment portable devices.” Id. at 23 (citing
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`Ex. 1003, ¶ 51). Accordingly, Patent Owner argument is premised on a stark
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`mischaracterization of the Petition.
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`Second, Patent Owner’s expert identifies a single technical reason a POSITA
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`might not anticipate success implementing the proposed combination: “there would
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`be hardware and software challenges in implementing a feature data generation unit
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`that can simultaneously implement both the third embodiment and the fifth
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`embodiment.” Ex. 2002, ¶ 66. As explained in Section II.C.1, however, the proposed
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`combination utilizes the gesture detecting processing of the third embodiment and
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`the videoconference processing of the fifth embodiment separately and sequentially.
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`Accordingly, Mr. Occhiogrosso’s sole critique is irrelevant to the proposed
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`combination.
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`5. Patent Owner’s expert entirely fails to explain why a gesture to power
`on a device is materially different from a gesture to initiate image
`capture
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`Patent Owner’s final critique of the motivation combine suggests that
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`Numazaki’s third embodiment teaching that a gesture may be used to power on/off
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`home appliances “is different than invoking . . . image capture.” Paper 10, 22. From
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`this, it argues that “the teachings of Numazaki provide little guarantee of success”
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`when implementing the proposed combination. Id. In support, the POR cites Mr.
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`Occhiogrosso’s declaration, which merely parrots the POR without analysis or
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`elaboration. Ex. 2002, ¶ 67.
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`First, Patent Owner cites no authority for the proposition that obviousness
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`requires a “guarantee of success.” The Petition explains at length why a POSITA
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`would have anticipated success in implementing the proposed combination. Paper 1,
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`23-25. The law demands no more certainty.
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`Second, neither Patent Owner nor its expert explain why gestures used to turn
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`appliances on/off are materially different from gestures used to initiate a process
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`such as Numazaki’s videoconference functionality. Accordingly, this argument
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`should be accorded no weight.
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`E. Numazaki’s unit 102 is fixed in relation to camera 351
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`Patent Owner’s final substantive argument challenges the Petition’s evidence
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`that unit 102 is fixed in relation to camera 351 in the proposed combination,
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`satisfying Claim 4. Paper 10, 23-24.1
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`Mapping Claim 4, the Petition set forth that Numazaki’s reflected light
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`extraction unit 102 and digital camera 351 are arranged “side-by-side such that they
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`have overlapping fields of view.” Paper 1, 38 (further citing Ex. 1004 at 39:4-44 for
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`its teaching that they are “arranged in parallel”) (emphasis added). Patent Owner and
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`its expert focus on the “arranged in parallel” teaching, ignoring entirely the Petition’s
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`argument that unit 102 and camera 351 have “overlapping fields of view.” Paper 10,
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`23-24; Ex. 2002, ¶¶ 70-71. But the fact that these optical sensors have (and must
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`retain) overlapping fields of view is key to concluding that they are fixed in relation
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`to each other. The Petition explained the relevance of this point:
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`[T]he fifth embodiment processes the output of two-sensor structure
`102 to identify an outline of the subject and subtracts everything outside
`this outline from the image captured by the visible light sensor 351.
`[Numazaki (Ex. 1004),] 39:24-60. Given this functionality in which the
`output of unit 102 is used to define which portions the video captured
`by camera 351 are retained, a PHOSITA would have understood that
`both are forward facing and have overlapping fields of view. Bederson
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`1 The POR advances substantively identical arguments for Claims 11 and 18. Id. at
`26, 29.
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`Dec. (Ex. 1003), ¶ 52 (explaining that the two outputs must have
`overlapping fields of view for one to define what is extracted from the
`other).
`Paper 1, 27-28 (emphasis added); see also id. at 28 (citing Fig. 48, which illustrates
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`the outputs of unit 102 and camera 351, visually confirming they have overlapping
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`fields of view). On cross examination, Mr. Occhiogrosso admitted that unit 102 and
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`camera 351 must retain overlapping fields of view in order to “satisfy the intended
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`purpose” of Numazaki’s fifth embodiment. Ex. 1019, 23:21-24:22. He also admitted
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`that fixing unit 102