Inter Partes Review
`U.S. Patent No. 8,878,949
`Oral Argument, September 14, 2022
`
`Apple Inc. v. Gesture Technology Partners LLC
`Case No. IPR2021-00921
`
`Petitioner’s Demonstrative Exhibits – Not Evidence
`
`Petitioner’s DX-1
`
`
`U.S. Patent No. 8,878,949
`Oral Argument, September 14, 2022
`
`Apple Inc. v. Gesture Technology Partners LLC
`Case No. IPR2021-00921
`
`Petitioner’s Demonstrative Exhibits – Not Evidence
`
`Petitioner’s DX-1
`
`
`
`Grounds
`
`Ground 1: Claims 1-18
`} Numazaki (Ex. 1004) in view of Nonaka (Ex. 1005)
`
`Ground 2: Claims 6, 11, 12
`} Numazaki in view of Nonaka and in further view of Aviv (Ex. 1006)
`
`Petition at 6-7 (identifying challenged claims)
`
`Petitioner’s DX-2
`
`
`
`Remaining Disputes
`
`1. Numazaki teaches the claimed “electro-optical sensor.”
`
`2. Proposed Combination:
`} There are no technical barriers to implementing Numazaki’s 3rd and 5th
`embodiments sequentially.
`} Proposed Grounds are 103—Numazaki need not have expressly contemplated
`the specific combination of its embodiments to render the claims obvious.
`} Not all videoconference users sit within reach of camera.
`
`3. Dep. Claims 4, 11 & 18: Numazaki’s unit 102 and
`camera 351 are “fixed in relation to” each other.
`
`4. The PTAB has jurisdiction to review expired patents.
`
`Petitioner’s DX-3
`
`
`
`Proposed Combination
`} Implement in Numazaki’s 8th embodiment laptop:
`} Numazaki’s 3rd embodiment gesture-based commands
`} Numazaki’s 5th embodiment videoconferencing
`} Initiate videoconference via image-capture gesture
`pursuant to Nonaka
`
`Petition, 11-25
`
`Petitioner’s DX-4
`
`
`
`Numazaki’s 8th Embodiment
`
`Petition, 16-17.
`
`} Ex. 1004, 50:25-37
`
`Petitioner’s DX-5
`
`
`
`Numazaki’s 8th embodiment incorporates earlier-
`described gesture detection
`
`Ex. 1004, 50:18-24; Petition, 16-17.
`
`Petitioner’s DX-6
`
`
`
`Numazaki’s Fig. 2 Image Differencing Functionality
`
`Petitioner’s DX-7
`
`
`
`Numazaki’s 3rd embodiment: gesture-based commands
`
`} Ex. 1004, 29:1-8
`
`Petition, 12-14.
`
`} Ex. 1004, 31:3-10
`
`Petitioner’s DX-8
`
`
`
`Numazaki’s 5th embodiment: videoconferencing
`
`Petition, 26-29.
`
`Petitioner’s DX-9
`
`
`
`Nonaka’s image-capture gesture improves upon prior
`art timers and remote controls
`
`Petition, 18-22.
`
`}
`
`Ex. 1005, 15:11-21; see also
`id. at 2:6-25
`
`Petitioner’s DX-10
`
`
`
`Motivation to Combine
`
`} Allows Numazaki to realize remote image capture benefits
`expressly described by Nonaka
`} Allows user to initiate videoconference from a distance in a more
`efficient and flexible manner than timers or remote controls
`
`hardware/software
`the
`describes
`expressly
`} Numazaki
`necessary to implement proposed functionality
`} High expectation of success where Nonaka merely motivates specific
`implementation of Numazaki’s native features
`
`Petition, 20-25
`
`Petitioner’s DX-11
`
`
`
`Numazaki teaches the claimed “electro-
`optical sensor”
`
`} Sur-Reply at 2:
`
`Petitioner’s DX-12
`
`
`
`Numazaki teaches the claimed “electro-
`optical sensor” (cont.)
`} Petition mapped Fig. 2’s “reflected light extraction unit” 102.
`
`Petition, 26-29; Bederson Dec. (Ex. 1003), 39-43.
`
`Petitioner’s DX-13
`
`
`
`Numazaki teaches the claimed “electro-
`optical sensor” (cont.)
`} PO’s expert admitted that unit 102 includes “electro-
`optical sensors”
`
`Occhiogrosso Trans. (Ex. 1019), 15:21-16:3
`
`Petitioner’s DX-14
`
`
`
`Numazaki teaches the claimed “electro-
`optical sensor” (cont.)
`
`Sur-Reply, 1.
`
`Petitioner’s DX-15
`
`
`
`Numazaki teaches the claimed “electro-
`optical sensor” (cont.)
`} The Board rejected PO’s argument at institution
`
`Institution Decision, 17.
`
`Petitioner’s DX-16
`
`
`
`Petitioner set forth the sequential nature of the proposed
`combination—3rd embodiment used to initiate 5th embodiment
`
`Petition, 31.
`
`Bederson Dec. (Ex. 1003), ¶48.
`
`Petition, 31; Reply, 8-9.
`
`Petitioner’s DX-17
`
`
`
`In response to POR, Dr. Bederson elaborated on his
`initial testimony
`
`Reply, 7-9; Bederson Supp. Dec. (Ex. 1018), ¶¶3-9.
`
`Petitioner’s DX-18
`
`
`
`Absent evidence of technical difficulty, Patent Owner newly
`demands implementation details its expert did not address
`
`Sur-Reply, 7-9.
`
`Petitioner’s DX-19
`
`
`
`Patent Owner conflates anticipation and obviousness
`
`POR, 16-17.
`
`Petitioner’s DX-20
`
`
`
`Patent Owner conflates anticipation and obviousness
`(cont.)
`teachings are contained in separate
`} Where relevant
`embodiments, “if a person of ordinary skill can implement
`a predictable variation, § 103 likely bars its patentability.”
`Bos. Sci. Scimed, Inc. v. Cordis Corp. 554 F.3d 982, 991 (Fed. Cir.
`2009) (quoting KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416
`(2007)); Reply, 10-11.
`
`} Sur-Reply, 6-8:
`} PO does not dispute Bos. Sci. principle holding.
`} Instead, PO seeks to distinguish Bos. Sci. on its facts.
`} “Petitioner’s proposed combination .
`.
`.
`is more complex than the extra
`‘coating layer’ scenario in Boston Sci.”
`} PO cites Occhiogrosso at ¶¶ 58-59, but he never opined on alleged
`complexity.
`
`Petitioner’s DX-21
`
`
`
`Proposed combination turns on “remote” initiation
`
`Petition, 21-22, 31.
`
`Petitioner’s DX-22
`
`
`
`Ignoring premise of proposed combination, PO asks
`Board to assume there is no need for remote initiation
`
`POR, 18-19.
`
`Petitioner’s DX-23
`
`
`
`Many scenarios benefit from remote initiation
`} Dr. Bederson identifies examples in
`which camera’s field of view puts user
`out of reach:
`} Standing lecturer
`} Product demonstration
`of
`depiction
`} Numazaki’s
`own
`videoconference subject places user at
`a distance from the camera.
`
`Ex. 1018, ¶11.
`
`Petitioner’s DX-24
`
`
`
`Claims 4, 11, & 18: Unit 102 and camera 351 are “fixed in
`relation to” each other
`} Numazaki’s 5th embodiment:
`
`Petitioner’s DX-25
`Petition, 38 (102 and 351 “have overlapping fields of view” and “are arranged in parallel”).
`
`
`
`Claims 4, 11, & 18: Mr. Occhiogrosso’s cross examination
`supports Petitioner
`
`Ex. 1019, 24:16-26:2.
`
`Petitioner’s DX-26
`
`
`
`The Board has Jurisdiction to Review Expired
`Patents
`} PO argues the PTO has no interest in reviewing
`patents once they expire. POR, 1-2.
`
`} The Federal Circuit has expressly recognized the
`importance of the Board’s review of expired patents
`given that they can be asserted for past damages.
`} Sony Corp. v. Iancu, 924 F.3d 1235 (Fed. Cir. 2019); Reply, 20-22
`(discussing the same).
`
`} Patent Owner did not address issue in Sur-Reply.
`
`Petitioner’s DX-27
`
`
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