Trials@uspto.gov
`571-272-7822
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`Paper # 23
`Entered: November 29, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______
`
`APPLE, INC., LG ELECTRONICS, INC.,
`LG ELECTRONICS U.S.A., INC., AND GOOGLE LLC,
`Petitioner,
`
`v.
`
`GESTURE TECHNOLOGY PARTNERS, LLC,
`Patent Owner.
`__________
`
`IPR2021-00921
`Patent 8,878,949 B2
`__________
`
`Record of Oral Hearing
`Held: September 14, 2022
`__________
`
`Before PATRICK R. SCANLON, GREGG I. ANDERSON, and
`BRENT M. DOUGAL, Administrative Patent Judges.
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`IPR2021-00921
`Patent 8,878,949 B2
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`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`PAUL HART
`ADAM SEITZ
`Of: Erise IP, P.A
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`TODD LANDIS
`JOHN WITTENZELLNER
`Of: Williams Simons & Landis PLLC
`tlandis@wsltrial.com
`johnw@wsltrial.com
`
`
`
`The above-entitled matter came on for hearing Wednesday,
`September 14, 2022, commencing at 1:00 p.m. EDT, via Video-conference.
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`IPR2021-00921
`Patent 8,878,949 B2
`
`
`P-R-O-C-E-E-D-I-N-G-S
`
`(1:00 p.m.)
`
`JUDGE SCANLON: Okay. Thank you. Good afternoon or good
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`morning, depending on where you're located.
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`Welcome to the Patent Trial and Appeal Board. We're here today for
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`two hearings; first, in IPR2021-00921 between Petitioner Apple, LG
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`Electronics, LG Electronics U.S.A., and Google LLC, and Patent Owner
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`Gesture Technology Partners, LLC.
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`The challenged patent is Patent Number 8,878,949.
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`I'm Judge Scanlon. Joining me today are Judge Anderson and Judge
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`Dougal.
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`And the hearing for IPR2021-00923 will commence after this hearing
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`concludes.
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`So, first, let's start with appearances. Who is here for Petitioner,
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`please?
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`MR. HART: Thank you, Your Honor. Paul Hart for Petitioner Apple.
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`Joining me today in person, but off camera, is Adam Seitz, my co-counsel
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`on this matter.
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`JUDGE SCANLON: All right. Thank you.
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`And for Patent Owner, please?
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`MR. WITTENZELLNER: Good afternoon, Your Honor. My name is
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`John Wittenzellner. I'm with the law firm Williams, Simons & Landis on
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`behalf of the Patent Owner. And I'm joined by my colleague, Mr. Todd
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`Landis, who is the lead counsel in this proceeding.
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`JUDGE SCANLON: Very good. Thank you.
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`IPR2021-00921
`Patent 8,878,949 B2
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`Because we're conducting this hearing by video, please make every
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`effort to speak clearly and try to avoid speaking over others. That will assist
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`our court reporter in making a clear record.
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`Also, try to mute your line when you're not speaking.
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`When referring to materials from your demonstratives, it's helpful if
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`you provide us with the page number for the slide you're referencing to
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`improve the clarity of the record, or if you're citing to other exhibits or
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`papers in the record, provide page number or page and line number, as
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`appropriate.
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`We have all your slides and documents in front of us, so feel free to
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`refer to whatever you would like to.
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`And I believe there is a public audio line today. I just wanted to make
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`everyone aware that others may be listening. I don't believe there is any
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`confidential information in the record. But if
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` there is something that's
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`confidential that you want to discuss, you know, just let us know, so that you
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`-- we can make accommodations.
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`As set forth in the Hearing Order, each party will have 60 minutes to
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`present their arguments. Because it bears the burden of persuasion,
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`Petitioner will go first and may reserve no more than half of its time for
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`rebuttal.
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`Patent Owner will then have an opportunity to respond and may also
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`reserve time for sur-rebuttal. We will keep the time to the best of our ability,
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`and I'll try to provide updates about the remaining time as the hearing
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`progresses.
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`So with that, we'll start with Petitioner. And please let us know how
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`much time, if any, you would like to reserve for rebuttal.
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`IPR2021-00921
`Patent 8,878,949 B2
`
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`MR. HART: Thank you, Your Honor. I'd like to reserve 20 minutes
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`for rebuttal.
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`JUDGE SCANLON: Okay. Very good. Thank you.
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`MR. HART: All right. Well, thanks very much. As with the other
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`proceedings between these parties, the challenged patent here generally
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`describes gesture-based control of a device. Unique to the ’949 patent,
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`however, the claims here focus on functionality that permits a user to
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`perform a gesture before a camera that causes the camera to take a picture.
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`I will sometimes refer to this functionality as an image-capture gesture
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`today.
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`Just for housekeeping matters, Petitioner's slides have a footnote DX-
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`and a number to indicate the pages. I will be referencing those DX
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`designations throughout today's hearing to guide the -- to guide the
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`argument.
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`DX-2 provides a summary of the grounds in this proceeding. The
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`primary reference in both grounds is Numazaki, which the parties discussed
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`at length yesterday and which teaches numerous gesture-based device
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`control functionalities. The second reference is Nonaka, and Nonaka
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`teaches an image-capture gesture, the exact focus of the ’924 patent claims.
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`Its goal is to allow users to remotely initiate image capture using a
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`gesture. It describes numerous benefits that gestures provide over the then-
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`existing methods of remotely initiating image capture, such as remote
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`controls and timers.
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`Now, the proposed combination here proposes that a POSITA would
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`have been motivated by Nonaka to combine two of Numazaki's
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`embodiments in a single device; namely, the third embodiment, which
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`IPR2021-00921
`Patent 8,878,949 B2
`
`converts gestures into a command. It allows users to turn on or turn off
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`devices using hand-based gestures.
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`The other embodiment is the fifth embodiment, which describes a
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`video conferencing system. The resulting combination is a video conference
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`device that permits a user to get in place before the camera and remotely
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`initiate that video conference through a hand-based pre-determined gesture.
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`DX-3 summarizes the remaining disputes between the parties. The
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`parties first dispute whether Numazaki's Figure 2 imaging structure teaches
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`the claimed electro-optical sensor. The Board correctly held in Institution
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`that it does, and since Institution Patent Owner's expert has admitted that
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`Figure 2 includes multiple electro-optical sensors.
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`The next set of disputes all relate to the motivations to make the
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`proposed combination. First, despite Patent Owner's repeated attempts to
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`distort the record on the combination, there is no evidence of technical
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`barriers to implementing Numazaki's third embodiment as a trigger to
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`initiate Numazaki's fifth embodiment video conferencing.
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`Second, Patent Owner conflates anticipation and obviousness. It
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`argues that Numazaki must have expressly taught combining its own
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`embodiments as proposed by the Petition. As the record demonstrates, a
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`POSITA would have combined these -- the separate embodiments in
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`Numazaki -- pursuant to Nonaka's motivating disclosure. That Numazaki
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`itself did not expressly describe combining those third and fifth
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`embodiments is no bar to a finding of obviousness.
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`Third, ignoring compelling evidence to the contrary, Patent Owner
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`asked the Board to conclude that no user would ever need to remotely
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`IPR2021-00921
`Patent 8,878,949 B2
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`initiate video conference functionality, the entire premise of the proposed
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`combination here.
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`As the record demonstrates, remote initiation is not only common and
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`useful, but it is also expressly contemplated by Numazaki itself.
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`The last substantive issue in this proceeding relates to a requirement
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`in Claims 4, 11, and 18 that the electro-optical sensor and the camera are
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`fixed in relation to one another. As I'll describe and as the record
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`demonstrates, Numazaki's fifth embodiment requires that they are fixed and
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`that they remain fixed in order to accomplish its goals.
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`DX-4 through DX-11 provide a brief overview of the proposed
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`combination and the motivations to make that combination. In DX-4, I have
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`summarized the combination itself. It is Numazaki's eighth embodiment
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`laptop that implements the third embodiment gesture commands as a means
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`of initiating the fifth embodiment video conferencing functionality.
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`And Nonoka provides the motivating teaching to do that. It teaches
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`that image gesture capture -- I'm sorry, the image capture gesture that is the
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`focus of these claims.
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`If we go to DX-5, we see Numazaki's eighth embodiment. It teaches a
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`laptop as depicted in Figure 74 that is equipped with imaging and lighting
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`functionality. In DX-6, we see that Numazaki teaches its eighth
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`embodiment, incorporates earlier described embodiments, including
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`information input generation apparatuses described above.
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`So the point of the eighth embodiment in the current proceeding is the
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`structure, the device that implements this proposed combination of its third
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`embodiment and its fifth embodiment.
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`IPR2021-00921
`Patent 8,878,949 B2
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`Skipping to DX-8, DX-8 provides a high-level summary of
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`Numazaki's third embodiment. It uses the second embodiment structure, the
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`imaging structure of Numazaki's second embodiment, to detect gestures or
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`combinations of gestures, and then converts them into commands.
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`As we see in the bottom right excerpt on DX-8, Numazaki describes
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`that this third embodiment functionality can be used to allow the user to
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`perform a hand-based gesture that turns on or off a TV or lighting equipment
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`or other devices. So this is something more than just moving an object
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`within an application, a common application of gesture-based control that is
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`described elsewhere in Numazaki.
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`JUDGE SCANLON: Excuse me, Mr. Hart. This is Judge Scanlon. I
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`think you just said that the third embodiment uses the structure of the second
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`embodiment. Is it the second embodiment or the first embodiment in Figure
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`2?
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`MR. HART: Too many numbers. Thanks for --
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`JUDGE SCANLON: Yeah.
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`MR. HART: -- keeping me honest, Your Honor. It is the first
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`embodiment, the --
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`JUDGE SCANLON: Thank you.
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`MR. HART: Yeah. The structure from the first embodiment is Figure
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`2, and that's what is used in the third embodiment for that gesture detection.
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`DX-9 provides a summary of Numazaki's fifth embodiment, the video
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`conferencing embodiment. As we see in DX-9, and Figure 46 specifically,
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`this also implements unit 102 from Numazaki's Figure 2 that comes from its
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`first embodiment. It uses that unit 102 to define an outline of the subject, the
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`person who is the subject of the video conferencing functionality.
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`IPR2021-00921
`Patent 8,878,949 B2
`
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`It then takes that outline and uses it to remove all background
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`information from behind that user in the image that is captured by camera
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`351. So 351 takes the full image, creates a video feed, and then the outline
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`created by unit 102 is used to define the background information so it can be
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`removed, and that reduces the overall bandwidth that is required for that
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`video stream.
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`In DX-10, the final disclosure relevant to the proposed combination
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`here, we see Nonaka. Nonaka teaches that gestures can be used to remotely
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`initiate image capture, as depicted in these two images on DX-10 from
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`Nonaka.
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`Now, it acknowledges that the then-existing dominant methods of
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`remotely initiating image capture with remote controls and timer
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`mechanisms, and it explains that gestures provide benefits over both of those
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`mechanisms. It explains that gestures are cheaper and simpler than remote
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`controls and provide a higher degree of freedom than timers.
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`DX-11 provides an overview of the key motivations to combine in
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`this proceeding. Number 1, the first motivation to combine, is that the
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`benefits of Nonaka's image capture gesture would improve Numazaki's
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`video conference system -- conferencing system in the same way they
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`benefit Nonaka, allowing users to get into position using all the time they
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`need to do that, and then to initiate the video conferencing functionality
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`when they're ready, when they're prepared.
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`The second key motivation to combine here is that Nonaka merely
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`provides a motivation to combine distinct embodiments from Numazaki,
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`because all of the hardware and software and the proposed combination
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`IPR2021-00921
`Patent 8,878,949 B2
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`come from a single reference -- Numazaki. A POSITA would have enjoyed
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`a high expectation of success here.
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`DX-12 through DX-16 cover the first substantive dispute between the
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`parties in this proceeding. That centers on Numazaki's Figure 2. As we see
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`on DX-12, at Patent Owner's Sur-reply, page 2, Patent Owner argues that the
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`record fails to demonstrate unit 102 from Numazaki satisfies the claimed
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`electro-optical sensor. Patent Owner is incorrect. Even its own expert
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`agrees that unit 102 includes two electro-optical sensors.
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`In DX-13, we see the evidence from the Petition, which established
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`that unit 102 not only includes those electro-optical sensors but that they are
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`the same electro-optical sensor technology that is disclosed by the ’949
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`patent, CCD or CMOS sensors. And if we turn to DX-14, we see that Mr.
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`Occhiogrosso, Patent Owner's expert, agrees. He conceded on cross-
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`examination that both unit 109 and 110 within unit 102 are in fact electro-
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`optical sensors.
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`DX-15, Patent Owner's remaining argument is set forth in its Sur-
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`reply at 1, is just a repeat of its narrow claim interpretation it advanced in its
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`proffer and that the Board correctly rejected at Institution.
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`We see that Patent Owner is arguing that unit 109 cannot satisfy the
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`claims because it includes lighting, timing, and image difference in
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`hardware. But the Board addressed this exact argument in Institution. In
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`DX-16, the Institution Decision, at page 17, included that claims are open-
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`ended and do not exclude this additional circuitry, expressly addressing the
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`lighting unit, the image subtraction circuitry, and the timing circuitry.
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`Patent Owner provides the Board no reason to deviate from this
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`preliminary conclusion in its final written decision.
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`IPR2021-00921
`Patent 8,878,949 B2
`
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`Because the Board followed up yesterday on the point of, you know,
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`what exactly satisfies the claimed imaging component, I wanted to briefly
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`address that. The claims recite determining a gesture based on the electro-
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`optical sensor output. Now, both want unit 102 as a whole, and the
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`individual sensors within unit 102 satisfy the claims.
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`Unit 102, as we have already discussed, includes two electro-optical
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`sensors, and its output is analyzed to determine the user's gesture. This was
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`the Petition's focus. The Petitioner's papers in this matter focus
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`predominantly on mapping unit 102 and all its components to the claimed
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`electro-optical sensor.
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`But it's worth pointing out that the individual sensors within unit 102
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`also satisfy this limitation. Unit 102's output is derived from the outputs of
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`the individual sensors 109 and 110. And for this reason, the gesture is also
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`determined based on the outputs of each individual sensor within unit 102.
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`DX-17 through DX-19 address the parties' dispute concerning the
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`interaction between Numazaki's third and fifth embodiments in the proposed
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`combination. In its -- Patent Owner's Response, Patent Owner argued that
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`the Petition failed to explain whether Numazaki's third and fifth
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`embodiments were implemented simultaneously or sequentially. If
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`simultaneously, Patent Owner argued, there may be technical difficulties
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`implementing them because Numazaki's third and fifth embodiments share
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`components.
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`Now turning to DX-17, these hypothetical technical difficulties
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`simply do not exist. The Petition was clear that the features are
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`implemented sequentially. Numazaki's third embodiment is used to detect a
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`IPR2021-00921
`Patent 8,878,949 B2
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`gesture that causes the system to transition to its fifth embodiment, video
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`conferencing.
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`Dr. Bederson in the lower right corner of DX-17, Dr. Bederson's
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`opening declaration similarly explained that the third embodiment is used to
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`initiate the fifth embodiment.
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`DX-18 are excerpts from Dr. Bederson's supplemental declaration in
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`response to the Patent Owner Response. He elaborated that the distinct
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`embodiments are in fact implemented sequentially because one acts as a
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`trigger for the other. And he noted that because they are not implemented
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`simultaneously there are no technical barriers to the third and fifth
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`embodiments sharing sort of hardware or software in the proposed
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`combination.
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`Turning to DX-19, Patent Owner has introduced no evidence,
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`testimonial or otherwise, of technical difficulties under a proper framing
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`where the third and fifth embodiments were implemented sequentially as the
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`Petition set forth that they should be.
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`In its Sur-reply, Patent Owner has instead introduced a new argument
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`that neither party's expert has addressed. Patent Owner insists that the
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`Petition is lacking because it did not expressly address the mechanics of
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`turning off the third embodiment when it turned on the fifth embodiment.
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`Again, there is no expert testimony or documentary evidence that supports
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`Patent Owner's demand for this implementation detail. And because it's
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`wholly unsupported and newly introduced in the Sur-reply, the Board should
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`accord it no weight.
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`DX-20 through DX-21 address Patent Owner's contention that in
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`order to render the claims obvious Numazaki itself must have expressly
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`IPR2021-00921
`Patent 8,878,949 B2
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`proposed combining embodiments three and five in the manner proposed by
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`the Petition. We see Patent Owner's argument in DX-20 from its Patent
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`Owner Response at 16 to 17. It contends that the proposed combination
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`would not have been obvious because Numazaki itself did not describe it as
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`a separate embodiment.
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`Patent Owner is simply conflating anticipation and obvious here.
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`Under 103, Numazaki does not itself expressly contemplate combining
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`embodiments 3 and 5, is no bar so long as a POSITA would have been
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`motivated to do so. And we see that from the Federal Circuit on DX-21 in
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`the Boston Scientific case.
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`The Federal Circuit explained that where relevant teachings are
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`contained in separate embodiments, if a person of ordinary skill can
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`implement a predictable variation, Section 103 likely bars its patentability.
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`Now, in its Sur-reply, Patent Owner did not dispute the principal
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`holding in Boston Scientific. Instead, it attempts to distinguish Boston
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`Scientific on its -- on its facts, claiming that the proposed combination here
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`is more complex than Boston Scientific. But there is simply no support for
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`that theory. Its expert, Mr. Occhiogrosso, did not opine on this alleged
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`complexity, so this theory, too, should be accorded no weight.
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`DX-22 through DX-24 address Patent Owner's attempt to ignore the
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`whole premise of the proposed combination. Again, the combination
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`establishes that there is benefit to allowing users to remotely initiate the
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`video conference, just like the users in Nonaka are able to remotely initiate a
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`camera taking their own picture.
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`In DX-22, the Petition proposed that Nonaka's remote initiation
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`technology would benefit Numazaki's video conferencing because some
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`IPR2021-00921
`Patent 8,878,949 B2
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`users need to remotely initiate the video recording. "The user experience
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`would be improved by allowing users to position themselves in place before
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`the video camera, and to initiate the video capture through a gesture." In
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`other words, they are set far back from the camera itself and must use some
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`mechanism to initiate that video conference functionality.
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`In DX-23, a couple of excerpts from the Patent Owner Response.
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`Patent Owner just ignores this premise entirely, insisting that no video
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`conference user would ever need to initiate a recording remotely. It reasons
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`that users would likely be sitting in front of a laptop before and during the
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`video conference and would have no need for such remote initiation.
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`But as we see in DX-24, Dr. Bederson, in his supplemental
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`declaration, explained that there are numerous scenarios in which remote
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`initiation is beneficial. He identified a standing lecturer or a product
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`demonstration as scenarios in which the camera must be some distance from
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`the subject in order to capture a large enough field of view to capture the
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`person lecturing or the person performing a product demonstration.
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`He also noted that the subject in Numazaki's fifth embodiment, as we
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`see in Figure 48 in DX-24, is also standing apart from the camera and is not
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`seated before the camera-containing device as Patent Owner contends that it
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`would be. Given these straightforward and --
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`JUDGE SCANLON: Excuse me, Mr. Hart. I did ask -- want to ask a
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`question about Figure 48. I mean, to me, it seems sort of subjective to say
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`that that individual shown in the image is out of reach of the laptop or the
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`camera. Is there any basis other than observation to support that assertion?
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`MR. HART: The argument made by Patent Owner in this case asks
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`the Board to envision somebody sitting in front of a laptop as we all are right
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`IPR2021-00921
`Patent 8,878,949 B2
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`now, with a, you know, kind of floating head right in front of the display that
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`takes up the full display. So Dr. Bederson's analysis of Figure 48,with a
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`standing subject who looks like he is standing -- to me, it looks like he is
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`standing further away from a laptop than a seated subject would be in a
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`laptop-based video conference.
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`In his opinion, that user indicates or that image indicates that that
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`subject is not sitting in front of a laptop able to just press start in the video
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`conference functionality.
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`JUDGE SCANLON: Okay. Thank you.
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`MR. HART: You're welcome. In DX-25 and 26, I address the final
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`substantive dispute between the parties, whether Numazaki's unit 102 and
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`camera 351 in the fifth embodiment are "fixed in relation to" each other.
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`As I discussed earlier, the fifth embodiment uses unit 102 to define an
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`outline of the video conference subject, and then it uses that outline to
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`remove background information from the video feed captured by camera
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`351. The resulting image leaves only the subject in the video stream and
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`reduces the overall bandwidth required for that functionality.
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`To work properly, unit 102 and camera 351 must be facing the same
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`direction, and they must be capturing the same information. Because one
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`defines what is removed from the other, they must have a common starting
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`point. In the Petition, we describe this arrangement as the components being
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`arranged in parallel and having overlapping fields of view. Again, those are
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`the two components that ensure they are both producing an image that
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`captures the same information.
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`If we turn to DX-26, on cross-examination Mr. Occhiogrosso
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`conceded three -- conceded three key points that support Petitioner's case
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`IPR2021-00921
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`here. Number 1, in the top left, his testimony establishes that the fifth
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`embodiment does in fact require unit 102 and camera 351 to retain
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`overlapping fields of view. In other words, they must be capturing the same
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`information in order for the fifth embodiment to perform its goals.
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`Second point, on the right, in DX-26, is that fixing these components
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`ensures their fields of view are retained. If they start sharing fields of view
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`facing in the same direction and sharing fields of view, fixing them ensures
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`that that remains the same and that the fifth embodiment's functionality will
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`continue to work properly.
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`The third key point that Mr. Occhiogrosso conceded on
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`cross-examination is on the bottom left. He admitted that Numazaki never
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`teaches or suggests that the components are not fixed in relation to each
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`other. There is no teaching in Numazaki that those components would ever
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`move in relation to one another.
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`Now in its Sur-reply, Patent Owner argues that the fifth embodiment
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`might still work well enough even if there were some minimal movement
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`between unit 102 and camera 351, but critically, as Mr. Occhiogrosso
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`admitted, there is just no evidence in the record that these components would
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`move with respect to one another.
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`From this record, the Board should conclude that based on the
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`operation of Numazaki's fifth embodiment, unit 102 and camera 351 are
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`indeed fixed in relation to one another, satisfying Claims 4, 11, and 18.
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`JUDGE SCANLON: Excuse me. I did have a question on these
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`points, a couple of questions. Would you agree that Numazaki does not
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`expressly disclose that the two units are fixed in relation to one another?
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`IPR2021-00921
`Patent 8,878,949 B2
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`MR. HART: It certainly does not use the word "fixed." And it does
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`not expressly describe, you know, their mounting or their structure such that
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`you could deem Numazaki to have expressly stated that these are fixed and
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`do not move with respect to one another. The main support for this theory is
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`the operation of the fifth embodiment, as Dr. Bederson analyzed, mandates
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`that they would be fixed with respect to one another.
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`JUDGE SCANLON: So would you characterize that as more of an
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`inherency argument?
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`MR. HART: I would not. This is a 103 argument where
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`Dr. Bederson is interpreting how one of skill in the art would understand
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`these teachings. I think it's -- we're relying on Dr. Bederson's analysis of the
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`fifth embodiment to conclude that these are in fact fixed with respect to one
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`another. So we have not jumped through the hoops of inherency.
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`I do think that it's more properly characterized as reliance on an
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`expert's interpretation of the reference itself.
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`JUDGE SCANLON: Okay. Thank you.
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`MR. HART: If there are no further questions from Your Honors, I
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`will reserve the rest of my time for rebuttal.
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`JUDGE SCANLON: Okay. I don't think there are any further
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`questions. It looks like you haven't quite used 30 minutes. But I do -- the
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`Board does have a policy of reserving no more than half, so you would have
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`30 minutes remaining for -- for rebuttal.
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`MR. HART: I'll try to stay well within that 30 minutes, Your Honor.
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`JUDGE SCANLON: Okay. Very good. Okay. Thank you.
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`With that, we will turn it over to Patent Owner, and please let us know
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`if you would like to reserve any -- any time.
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`MR. WITTENZELLNER: Thank You, Your Honor. I would also
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`like to reserve 20 minutes, please.
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`JUDGE SCANLON: All right. You can begin when you are ready.
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`MR. WITTENZELLNER: Thank you, Your Honor. Before I delve
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`into the substance, I would like to note for the record that it is our position
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`that the Board doesn't have -- does not have jurisdiction over expired patents
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`because there is no longer a public franchise.
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`As the Board likely knows, GTP currently has a case pending before
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`the United States District Court for the Eastern District of Virginia on this
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`issue, as well as the briefing here. So, again, I am simply noting this -- our
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`position purely for the record.
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`JUDGE SCANLON: Very good.
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`MR. WITTENZELLNER: Thank you. I would like to start with
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`Patent Owner's demonstratives, which are Exhibit 2003, and specifically on
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`Slide 8. Let's just start with the dependent claims, Claims 4, 11, and 8,
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`which are what my counterpart were just discussing, and they require that
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`the electro-optical sensor be fixed in relation to the digital camera.
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`And these are claims for which the Board found in the Institution
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`Decision that Petitioner had failed to meet its burden.
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`Now, I believe I heard from Petitioner a change in position. When I
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`read the papers, Petitioner very clearly said Numazaki discloses this
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`limitation. There is no discussion of obviousness. There is no discussion of
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`modifying Numazaki, and there is no motivation discussed to do so.
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`Petitioner's position in this case is that Numazaki discloses this limitation,
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`and that after having a deficient petition, and even today admitting that the
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`IPR2021-00921
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`limitation is not disclosed in Numazaki, they are now trying to change
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`position to address that deficiency.
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`I think the Board was correct to ask, is this an inherency argument?
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`And the answer is yes. As Petitioner admits, the limitation is not expressly
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`disclosed in Numazaki, and so it is their burden to show that the two units in
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`Numazaki are necessarily fixed in relation to each other. They have not and
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`they cannot.
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`Moving to Slide 9 of Patent Owner's demonstratives, I have the
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`entirety of Petitioner's analysis of Claim 4 from the Petition. This is Paper 1,
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`page 38. It's written right there in plain language, "Numazaki expressly
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`teaches that visible light photo detection array 351 and the reflective light
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`extraction unit 102 are arranged in parallel." They did not argue that this
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`limitation in the dependent claims are obvious.
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`And their sole support was pointing to column 39, lines 4 through 44,
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`of Numazaki, which for the record is Exhibit 1004.
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`On Slide 10 of Patent Owner's demonstratives, I have Figure 46 and
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`excerpts of that same column cited by Petitioner. Now it's worth noting that
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`Petitioner's citation is describing Figure 46, which is a block diagram, and
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`that text Petitioner relies on is describing reflective light extraction unit 102
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`and photo detection array 351 as being in parallel in this logical block
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`diagram. But this is a block diagram. It does not describe the physical
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`relationship between these components.
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`And the use of the term "parallel" is consistent with this being a block
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`diagram. As Petitioner told us about the operation of this device, reflected
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`light extraction unit 102 operates in parallel with visible light photo
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`IPR2021-00921