`Patent No. 8,878,949
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`APPLE, INC., LG ELECTRONICS, INC., and
`LG ELECTRONICS U.S.A., INC.
`
`Petitioner,
`v.
`GESTURE TECHNOLOGY PARTNERS, LLC
`
`Patent Owner
`__________________
`Inter Partes Review No. IPR2021-009211
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY IN THE
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,878,949
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`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
`
`WILLIAMS SIMONS & LANDIS PLLC
`
`
`1IPR2022-00092 (LG Electronics, Inc. and LG Electronics U.S.A., Inc.) has been
`joined with this proceeding.
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`IPR2021-00921
`Patent No. 8,878,949
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`TABLE OF CONTENTS
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`I.
`II.
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`B.
`
`C.
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`INTRODUCTION ........................................................................................... 1
`GROUND 1: NUMAZAKI AND NONAKA DO NOT RENDER
`CLAIMS 1-18 OBVIOUS. .............................................................................. 1
`A.
`Numazaki’s “reflected light extraction unit” is not the claimed
`“electro-optical sensor.” ........................................................................ 1
`Petitioner cannot disregard the Petition to re-write its faulty
`obviousness combination. ..................................................................... 2
`Petitioner’s proposed combination of the prior art remains flawed. ..... 4
`1. Petitioner’s new details expose additional flaws in the
`proposed combination. .................................................................... 4
`2. Petitioner is again choosing to ignore parts of its own Petition...... 6
`3. Petitioner’s attempt to merge disparate embodiments in
`Numazaki remains flawed. .............................................................. 6
`Patent Owner’s critiques of Petitioner’s motivation to combine
`Numazaki and Nonaka are valid. ........................................................... 8
`Numazaki fails to teach the “reflected light extraction unit 102” is
`fixed in relation to “visible light photo-detection array 351.” ............10
`III. CONCLUSION ..............................................................................................12
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`D.
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`E.
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`i
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`TABLE OF AUTHORITIES
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`IPR2021-00921
`Patent No. 8,878,949
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`Cases
`Boston Sci. Scimed, Inc. v. Cordis Corp.,
` 554 F.3d 982 (Fed. Cir. 2009) ....................................................................... 6, 7, 8
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`Patent No. 8,878,949
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`INTRODUCTION
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`Gesture Technology Partners, LLC (“Patent Owner”) respectfully submits this
`
`
`I.
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`Sur-Reply to Petitioner’s Reply (“Reply”) in Inter Partes Review No. IPR2021-
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`00921 of U.S. Patent No. 8,878,949 (the “’949 Patent”).
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`II. GROUND 1: NUMAZAKI AND NONAKA DO NOT RENDER
`CLAIMS 1-18 OBVIOUS.
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`
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`A. Numazaki’s “reflected light extraction unit” is not the claimed
`“electro-optical sensor.”
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`
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`The Petition unambiguously states that “the ‘reflected light extraction unit
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`102’ is an ‘electro-optical sensor’ unit.’” Paper 1, p. 28 (emphasis added). This is
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`not correct. It is undisputed that Numazaki’s “reflected light extraction unit 102”
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`has a “difference calculation unit 111” and two photo-detection units (“photo-
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`detection unit 109” and “photo-detection unit 110”) with specific timing and lighting
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`requirements. See Ex. 1004, Fig. 2; Paper 1, p. 12. But a POSITA would not have
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`understood the claimed “electro-optical sensor” as having a “difference calculation
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`unit.” See Ex. 2002, ¶¶ 44-45. Similarly, a POSITA would not have understood the
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`claimed “electro-optical sensor” as having photo-detection units with different
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`timing and lighting requirements. See id. Accordingly, a POSITA would not have
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`understood the “reflected light extraction unit” as being the claimed “electro-optical
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`sensor.” See id.; Paper 13, pp. 6-8.
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`Neither Petitioner nor Petitioner’s expert attempts to rebut this argument.
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`Instead, Petitioner fixates on language in the Preliminary Response and argues that
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`Patent Owner’s Response “presents shorter, but substantively identical arguments.”
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`Reply at 4. But this is not correct. Patent Owner raised this argument in response
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`to the institution decision. See Paper 13, pp. 6-8. As noted by Petitioner, the Board
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`found “claim 1 does [not] preclude determining that a gesture has been performed
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`based on the output of more than one electro-optical sensor. Nor does claim 1
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`preclude additional hardware such as a lighting unit, image-subtraction circuitry, and
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`timing circuitry.” Reply at 3-4 (citing Paper 8, p. 17). But this finding does not
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`address how a POSITA would have understood the claimed “electro-optical sensor.”
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`Petitioner and Petitioner’s expert have not explained why a POSITA would
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`understand Numazaki’s “reflected light extract unit 102” to be an “electro-optical
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`sensor,” as required by claim element [1(a)] and claim element [8(a)]. Nonaka does
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`not cure the deficiencies of Numazaki. Thus, Numazaki and Nonaka fail to render
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`independent claims 1 and 8 obvious.
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`B.
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`Petitioner cannot disregard the Petition to re-write its faulty
`obviousness combination.
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`Petitioner seeks to change its position regarding the fifth and eighth
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`embodiments disclosed in Numazaki, ostensibly in response to the shortcomings
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`thereof identified in the Patent Owner Response. See Reply at 4-6. Petitioner
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`accuses Patent Owner of misrepresenting its position in the Petition. According to
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`Petitioner, “[t]he 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.” Reply at 5. Petitioner’s own words say the opposite:
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`Paper 1, p. 23 (emphasis added). Petitioner acknowledges Patent Owner’s argument
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`that Numazaki does not expressly teach incorporating the fifth embodiment
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`components in the eighth embodiment laptop, but fails to rebut them. See Reply at
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`4-5. Accordingly, any argument to the contrary is waived.
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`Petitioner notes that the Patent Owner Response argued that “‘reflected light
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`extraction unit 102’ in Fig. 74 is or includes one or more of the ‘reflected light
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`extraction unit 102’ and ‘visible light photo-detection array 351.’” Reply at 4 (citing
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`Paper 10, p. 8) (emphasis added). Because “reflected light extraction unit 102”
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`incorrectly appears twice, Patent Owner believes this misquote to be a typographical
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`error by Petitioner. To the extent it is not a typographical error, Patent Owner never
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`argued that Numazaki’s Figure 74 includes the “reflected light extraction unit 102.”
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`And Patent Owner never argued that “reflected light extraction unit 102” is or
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`includes one or more of the “reflected light extraction unit 102” and “visible light
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`photo-detection array 351.” In fact, Numazaki always discloses “visible light photo-
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`detection array 351” as being external to the “reflected light extraction unit 102.”
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`See Ex. 1004, Figs. 46, 49, 50, 52.
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`C.
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`Petitioner’s proposed combination of the prior art remains
`flawed.
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`1. Petitioner’s new details expose additional flaws in the proposed
`combination.
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`In the Reply, Petitioner explains for the first time the details of its proposed
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`combination of Numazaki and Nonaka, stating:
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` [T]he proposed combination utilizes the gesture detecting processing
`of the third embodiment and the videoconference processing of the fifth
`embodiment separately and sequentially . . . the output of reflected light
`extraction unit 102 would be processed by the third embodiment’s
`gesture detecting block until an image capture gesture is detected and
`would then be processed by the fifth embodiment’s videoconferencing
`block . . . the output of reflected light extraction unit 102 would not be
`processed by both the third embodiment and the fifth embodiment
`blocks at the same time.
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`Reply at 9 (emphasis added). As mentioned, the Reply is the first time Petitioner
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`has attempted to fully explain the details of its combination of Numazaki and
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`Nonaka. See Reply at 7-9. Petitioner’s improper attempt to correct a deficiency in
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`its petition should be disregarded. Petitioner argues that the Petition “set[] forth
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`precisely the timing relationship that Patent Owner demands.” Reply at 8. This is
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`incorrect. The Petition merely stated “a PHOSITA would have been motivated to
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`implement this gesture recognition as a means of allowing the user to initiate (or turn
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`on) the fifth embodiment’s videoconferencing functionality.” Paper 1, p. 31. But
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`turning off the third embodiment’s gesture detecting block such that “the output of
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`reflected light extraction unit 102 would not be processed by both the third
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`embodiment and the fifth embodiment blocks at the same time” was not set forth in
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`the Petition. It also was not set forth in the first declaration by Petitioner’s expert.
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`See Ex. 1003, ¶¶ 48-49. Again, Petitioner’s improper attempt to correct a deficiency
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`in its petition should be disregarded.
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`Further, Petitioner’s clarifications in the Reply expose an additional flaw in
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`the combination of Numazaki and Nonaka. Petitioner’s combination requires a
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`single gesture that both triggers image capture (i.e., Numazaki’s fifth embodiment)
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`and terminates gesture recognition (i.e., Numazaki’s third embodiment). Nonaka
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`allegedly contemplates an “image capture command gesture” for a camera. Paper 1,
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`p. 21. But Nonaka does not disclose that the same predetermined gesture also causes
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`termination of gesture recognition, as required by Petitioner’s combination.
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`Numazaki fares no better and Petitioner even admits that Numazaki does not disclose
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`a “gesture command” that “causes video capture to initiate.” Paper 1, pp. 20-21.
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`Thus, neither Numazaki nor Nonaka discloses the specialized gesture required by
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`Petitioner’s combination. Accordingly, the combination of Numazaki and Nonaka
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`fails to render the independent claims obvious.
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`2. Petitioner is again choosing to ignore parts of its own Petition.
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`In this section, Petitioner repeats the argument that “the Petition did not
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`suggest, nor does it depend on, Numazaki expressly teaching that the eighth
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`embodiment’s laptop includes the fifth embodiment’s components.” Reply at 10
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`(emphasis added). But as discussed above, under the “Motivation to Combine
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`Numazaki and Nonaka” section in the petition, Petitioner argues “a PHOSITA would
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`have anticipated success in implementing Numazaki in this manner given that
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`Numazaki . . . expressly contemplates incorporating . . . embodiments [1-7] in the
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`eighth embodiment portable devices.” Paper 1, p. 23 (emphasis added). Thus,
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`contrary to Petitioner’s contentions, the Petition at least suggests “Numazaki
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`expressly teaching that the eighth embodiment’s laptop includes the fifth
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`embodiment’s components.” Reply at 10.
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`3. Petitioner’s attempt to merge disparate embodiments in Numazaki
`remains flawed.
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`To justify its combination of Numazaki’s disparate embodiments, Petitioner
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`cites to Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982 (Fed. Cir. 2009). But
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`Boston Sci. is easily distinguishable from the present case. First, the two prior art
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`embodiments in Boston Sci. were “pictured side by side in the [prior art] patent . . .
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`Figure 3B [] is located directly below figure 4 in the patent.” Boston Sci. at 991
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`(emphasis added). The proximity of the two embodiments formed the basis for
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`obviousness: “Combining two embodiments disclosed adjacent to each other in a
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`prior art patent does not require a leap of inventiveness.” Id. (emphasis added). In
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`contrast, Numazaki’s third embodiment and fifth embodiment “feature data
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`generation units” are separated by more than 22 figures. Compare Ex. 1004, Fig. 23
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`with Ex. 1004, Fig. 46.
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`Second, one of the prior art embodiments in Boston Sci. disclosed a “metal
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`stent,” while the other prior art embodiment disclosed a “polymer stent.” Boston
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`Sci. at 991. The main difference between the two embodiments was an extra coating
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`layer (i.e., two coating layers instead of one). Id. The court found one of ordinary
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`skill would have been motivated to add the second coating layer to the embodiment
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`that only had one coating layer. “Just as the stent in figure 3B benefits from the two
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`layers . . . so would the stent in figure 4 benefit from the same two coating layers.”
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`Id. In contrast, Petitioner’s proposed combination requires, at least (1) adding the
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`“feature data generation unit” from Nuamazaki’s third embodiment into Numazaki’s
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`fifth embodiment, which already has a “feature data generation unit,” (2) splicing
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`the output of the “reflected light extraction unit” to feed both “feature data generation
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`units,” (3) adding some sequential timing requirements for the two “feature data
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`generation units,” and (4) adding this combination of the third and fifth embodiments
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`with the two “feature data generation units” into Numazaki’s eighth embodiment
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`laptop. See Paper 1, pp. 20-21; Reply at 8-9. This is more complex than the extra
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`“coating layer” scenario in Boston Sci. Accordingly, Petitioner’s reliance on Boston
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`Sci. is misplaced. There is no motivation for a POSITA to combine Numazaki’s
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`third and fifth embodiments. Ex. 2002, ¶¶ 58-59.
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`D.
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`Patent Owner’s critiques of Petitioner’s motivation to combine
`Numazaki and Nonaka are valid.
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`In the Reply, Petitioner complains “Mr. Occhiogrosso does not explain why a
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`user would necessarily stay within reach of
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`the
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`laptop for
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`the entire
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`videoconference.” Reply at 12. It is strange that Petitioner is concerned what
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`happens after the videoconference has started. Indeed, Petitioner’s proposed
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`combination uses “gesture recognition from Numazaki’s third embodiment as a
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`means to initiate a videoconference functionality as described in Numazaki’s fifth
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`embodiment.” Reply at 6 (emphasis added). Regardless, Petitioner has now
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`admitted that once videoconference functionality has been initiated (i.e., the
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`videoconference has started), gesture recognition functionality is terminated. See
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`Reply at 9 (“the proposed combination utilizes the gesture detecting processing of
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`the third embodiment and the videoconference processing of the fifth embodiment
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`separately and sequentially.”). With gesture commands no longer being accepted,
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`the user would need to stay in physical contact with the laptop to input commands.
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`Petitioner and Petitioner’s expert identify various scenarios in which the user
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`would allegedly not be able to “initiate image capture through physical control.”
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`Reply at 12. These include “a lecture in which the lecturer is standing, rather than
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`seated, and a tutorial in which the speaker is demonstrating the use of a product that
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`requires a broader field of view than remaining seated before the camera.” Id. at 12-
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`13 (citing Ex. 1018, ¶¶ 10-11). Petitioner and Petitioner’s expert also assert “the
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`person illustrated in [Numazaki’s] Fig. 48 is not seated before the camera and would
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`not be close enough to physically control the camera.” Id. at 13 (citing Ex. 1018, ¶
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`11). But for all of these edge case examples, Petitioner fails to explain why
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`Numazaki’s laptop in Figure 74 would be used for the videoconference instead of a
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`more suitable device. For example, Numazaki is completely silent about a laptop
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`being used for the scenario depicted in Figure 48. Ex. 1004, 40:29-40, Fig. 48.
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`Nonaka is also completely silent regarding the use of a laptop for image capture.
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`In the Reply, Petitioner argues “Nonaka’s gesture-based initiation allows the
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`user to take all the time necessary to get in position and permits initiating image
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`capture as soon as the user is ready, avoiding the frustrating waiting period
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`associated with timers.” Reply at 16. Petitioner’s expert alleges “[u]sing a self-
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`timer mechanism strips some level of control from the user, forcing the user to
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`predict the amount of time requires to get positioned and creating downsides for
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`predicting imprecisely.” Ex. 1018, ¶ 12. But neither Petition nor Petitioner’s expert
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`explains why this “waiting period associated with timers” is more frustrating than
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`the need to learn, remember, and execute an additional gesture, which would be
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`required with Petitioner’s proposed combination.
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`In the Reply, Petitioner alleges “neither Patent Owner nor its expert explain
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`why gestures used to turn appliances on/off are materially different from gestures
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`used to initiate a process such as Numazaki’s videoconference functionality.
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`Accordingly, this argument should be accorded no weight.” Reply at 18. But it is
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`Petitioner’s burden to explain why gestures that merely provide power to a device
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`are no different from gestures that trigger specific functions in a device (e.g., cause
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`an already powered camera to start capturing images). Petitioner has failed to do
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`this.
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`Accordingly, there is no motivation to combine Numazaki and Nonaka to
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`render the independent claims obvious.
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`E. Numazaki fails to teach the “reflected light extraction unit 102” is
`fixed in relation to “visible light photo-detection array 351.”
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`Claim 4 recites “wherein the electro-optical sensor is fixed in relation to the
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`digital camera.” In the Reply, Petitioner argues “Patent Owner and its expert focus
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`on the ‘arranged in parallel’ teaching, ignoring entirely the Petition’s argument that
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`unit 102 and camera 351 have ‘overlapping fields of view’ . . . But the fact that these
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`optical sensors have (and must retain) overlapping fields of view is key to
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`concluding that they are fixed in relation to each other.” Reply at 19 (emphasis
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`added). But “overlapping fields of view” does not necessarily mean component 102
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`is fixed in relation to component 351.
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`Numazaki never discloses the “reflected light extraction unit 102” and the
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`“visible light photo-detection array 351” have or require identical fields of view. See
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`Ex. 1004, 39:20-60. Further, Mr. Occhiogrosso testified that only a “partial overlap”
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`in the fields of view is needed to accomplish the goal of Numazaki’s fifth
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`embodiment. Ex. 1019, 24:16-24. Petitioner fails to explain how any movement of
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`these two components (102, 351) relative to each other necessarily results in zero
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`overlap (i.e., non-overlapping fields of view). Mr. Occhiogrosso confirmed that
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`movement of these two components (102, 351) relative to each other does not
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`necessarily result in non-overlapping fields of view.
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`11
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`Ex. 1019, 24:10-15. Accordingly, Petitioner’s alleged “overlapping fields of view”
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`requirement is not a barrier to movement of these two components (102, 351)
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`relative to each other. Thus, Petitioner has failed to show how Numazaki teaches or
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`suggests “wherein the electro-optical sensor is fixed in relation to the digital
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`camera,” as required by claim 4. Claims 11 and 18 recite similar limitations.
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`Nonaka does not cure the deficiencies of Numazaki. Accordingly, the combination
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`of Numazaki and Nonaka fails to render claims 4, 11, and 18 obvious.
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`III. CONCLUSION
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`For the foregoing reasons, Petitioner’s asserted grounds do not render any of
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`the Challenged Claims unpatentable.
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`CERTIFICATE OF COMPLIANCE
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`IPR2021-00921
`Patent No. 8,878,949
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`Pursuant to 37 C.F.R. § 42.24(d), I hereby certify that the foregoing Patent
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`Owner’s Sur-Reply contains 2,495 words as measured by the word processing
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`software used to prepare the document, excluding the cover page, signature block,
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`and portions exempted under 37 C.F.R. § 42.24(a) or (b).
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`DATED:
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`Respectfully Submitted,
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`By: /Todd E. Landis/
`Todd E. Landis
`Registration No. 44,200
`Counsel for Patent Owner
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`July 12, 2022
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`CERTIFICATE OF SERVICE
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`IPR2021-00921
`Patent No. 8,878,949
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on July 12,
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`2022, the foregoing document was served on counsel of record for Petitioner by
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`filing this document through the End-to-End System, as well as via electronic mail
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`to counsel of record for Petitioner (and jointed Petitioners) at the following
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`addresses:
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`Adam P. Seitz (Adam.Seitz@eriseip.com)
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`Paul R. Hart (Paul.Hart@eriseip.com)
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`Matthew D. Satchwell (Matthew.satchwell@dlapiper.com)
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`Gianni Minutoli (gianni.minutoli@dlapiper.com)
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`Paul R. Steadman (Paul.steadman@dlapiper.com)
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`Respectfully Submitted,
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`By: /Todd E. Landis/
`Todd E. Landis
`Registration No. 44,200
`Counsel for Patent Owner
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`14
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