Trials@uspto.gov
`571-272-7822
`
`Paper 24
`Entered: December 5, 2022
`
`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.
`
`IPR2021-009211
`Patent 8,878,949 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, BRENT M. DOUGAL, and
`SCOTT RAEVSKY, Administrative Patent Judges.
`SCANLON, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`1 IPR2022-00092 (LG Electronics, Inc. and LG Electronics U.S.A., Inc.) and
`IPR2022-00362 (Google LLC) have been joined with this proceeding.
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`IPR2021-00921
`Patent 8,878,949 B2
`
`INTRODUCTION
`I.
`Apple Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., and
`Google LLC (collectively “Petitioner”) challenge claims 1–18 of U.S. Patent
`No. 8,878,949 B2 (Ex. 1001, “the ’949 patent”). We have jurisdiction under
`35 U.S.C. § 6, and this Final Written Decision is issued pursuant to
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we
`determine that Petitioner has shown by a preponderance of the evidence that
`claims 1–3, 5–10, and 12–17 of the ’949 patent are unpatentable but has not
`shown by a preponderance of the evidence that claims 4, 11, and 18 are
`unpatentable.
`
`A. Procedural History
`Apple Inc. filed a Petition (Paper 1, “Pet.”) requesting an inter partes
`review of the challenged claims. Gesture Technology Partners, LLC
`(“Patent Owner”) filed a Preliminary Response (Paper 6).
`We instituted a trial as to all challenged claims. Paper 8 (“Decision
`on Institution” or “Dec. Inst.”).
`After institution, LG Electronics, Inc. and LG Electronics U.S.A., Inc.
`filed a petition and a motion for joinder to this proceeding. IPR2022-00092,
`Papers 1, 3. We granted the motion for joinder, and IPR2022-00092 was
`joined with this proceeding and dismissed. Paper 12, 11–12. In addition,
`Google LLC filed a petition and a motion for joinder to this proceeding.
`IPR2022-00362, Papers 2, 3. We granted the additional motion for joinder,
`and IPR2022-00362 was joined with this proceeding and dismissed.
`Paper 16, 5–6. Consequently, Apple Inc., LG Electronics, Inc., LG
`Electronics U.S.A., Inc., and Google LLC are joined in this proceeding.
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`Patent 8,878,949 B2
`Patent Owner filed a Patent Owner Response (Paper 10, “PO Resp.”),
`Petitioner filed a Reply (Paper 13, “Reply”), and Patent Owner filed a Sur-
`reply (Paper 14, “Sur-reply”).
`Petitioner relies on the Declaration of Dr. Benjamin B. Bederson
`(Ex. 1003) and the Supplemental Declaration of Dr. Benjamin B. Bederson
`(Ex. 1018) in support of its contentions. Patent Owner relies on the
`Declaration of Benedict Occhiogrosso (Ex. 2002) in support of its
`contentions.
`An oral hearing was held on September 14, 2022. A transcript of the
`hearing is included in the record. Paper 23 (“Tr.”).
`B. Real Parties in Interest
`Petitioner identifies Apple Inc., LG Electronics, Inc., LG Electronics
`U.S.A., Inc., and Google LLC as the real parties in interest. Pet. 65;
`IPR2022-00092, Paper 1, 62; IPR2022-00362, Paper 1, 61. Patent Owner
`identifies itself as the real party in interest. Paper 15, 1.
`C. Related Matters
`The parties identify the following proceedings as related matters
`involving the ’949 patent: Gesture Technology Partners, LLC v. Apple Inc.,
`No. 6:21-cv-00121 (W.D. Tex.); Gesture Technology Partners, LLC v.
`Lenovo Group Ltd., No. 6:21-cv-00122 (W.D. Tex.); Gesture Technology
`Partners, LLC v. LG Electronics, Inc., No. 6:21-cv-00123 (W.D. Tex.);
`Gesture Technology Partners, LLC v. Huawei Device Co., Ltd., No. 2:21-cv-
`00040 (E.D. Tex.); Gesture Technology Partners, LLC v. Samsung
`Electronics Co., Ltd., No. 2:21-cv-00041 (E.D. Tex.), Gesture Technology
`Partners, LLC v. Motorola Mobility LLC, No. 1:22-cv-03535 (N.D. Ill.), and
`Gesture Technology Partners, LLC v. Katherine K. Vidal, No. 1:22-cv-622
`(E.D. Va.).. Pet. 65; Paper 15, 1–3.
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`In addition, Patent Owner identifies the following inter partes review
`proceedings as related matters: IPR2021-00917; IPR2021-00920; IPR2021-
`00922; and IPR2021-00923. Paper 15, 2–3. Patent Owner also identifies
`the following related Ex Parte Reexaminations: No. 90/014,900;
`No. 90/014,901; No. 90/014,902; and No. 90/014,903. Id. at 3–4.
`D. The ’949 Patent
`The ’949 patent, titled “Camera Based Interaction and Instruction,”
`issued November 4, 2014, with claims 1–18. Ex. 1001, codes (45), (54),
`15:21–16:50. The ’949 patent relates to “enhanc[ing] the quality and
`usefulness of picture taking for pleasure, commercial, or other business
`purposes.” Id. at 1:4–6. In one embodiment, “stereo photogrammetry is
`combined with digital image acquisition to acquire or store scenes and poses
`of interest, and/or to interact with the subject in order to provide data to or
`from a computer.” Id. at 1:6–10.
`Figure 2A of the ’949 patent is reproduced below.
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`Figure 2A illustrates still camera system 201, which includes central camera
`202 having high resolution and color accuracy for picture taking. Id.
`at 4:66–5:2. Camera system 201 also includes two cameras 210, 211 on
`either side of central camera 202. Id. at 5:2–3. Cameras 210, 211 “may be
`lower resolution (allowing lower cost, and higher frame rate, as they have
`less pixels to scan in a given frame time), with little or no accurate color
`capability, as they are used to simply see object positions or special datum
`positions on objects.” Id. at 5:3–7.
`Camera system 201 further includes computer 220 that processes data
`from cameras 210, 211 “to get various position and/or orientation data
`concerning a person.” Id. at 5:24–26. “In general, one can use the system to
`automatically ‘shoot’ pictures” in response to a particular event, such as the
`subject undertaking a particular position or gesture—i.e., a silent command
`to take a picture. Id. at 5:30–49.
`E. Challenged Claims
`As noted above, Petitioner challenges claims 1–18 of the ’949 patent.
`Claims 1, 8, and 13 are independent. Claim 1 is illustrative of the claimed
`subject matter and is reproduced below:
`1. A portable device comprising:
`a device housing including a forward facing portion, the
`forward facing portion of the device housing encompassing
`an electro-optical sensor having a field of view and
`including a digital camera separate from the electro-optical
`sensor; and
`a processing unit within the device housing and operatively
`coupled to an output of the electro-optical sensor, wherein
`the processing unit is adapted to:
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`determine a gesture has been performed in the electro-
`optical sensor field of view based on the electro-optical
`sensor output, and
`control the digital camera in response to the gesture
`performed in the electro-optical sensor field of view,
`wherein the gesture corresponds to an image capture
`command, and wherein the image capture command
`causes the digital camera to store an image to memory.
`Ex. 1001, 15:21–38.
`F. Instituted Grounds of Unpatentability
`We instituted inter partes review of the challenged claims based on
`the following grounds of unpatentability asserted by Petitioner:2
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–18
`103(a)
`Numazaki,3 Nonaka4
`6, 12, 17
`103(a)
`Numazaki, Nonaka, Aviv5
`Dec. Inst. 27; Pet. 6–7.
`
`II. ANALYSIS
`A. Legal Standards
`To prevail in its challenge, Petitioner must demonstrate by a
`preponderance of the evidence that the claims are unpatentable. 35 U.S.C.
`§ 316(e); 37 C.F.R. § 42.1(d) (2020). “In an IPR, the petitioner has the
`burden from the onset to show with particularity why the patent it challenges
`is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’949 patent has an
`effective filing date before the March 16, 2013, effective date of the
`applicable AIA amendments, we apply the pre-AIA version of 35 U.S.C.
`§ 103.
`3 US 6,144,366, issued Nov. 7, 2000 (Ex. 1004).
`4 JP H4-73631, published Mar. 9, 1992 (Ex. 1005).
`5 US 5,666,157, issued Sept. 9, 1997 (Ex. 1006).
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`(Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes
`review petitions to identify “with particularity . . . the evidence that supports
`the grounds for the challenge to each claim”)). This burden of persuasion
`never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden
`of proof in inter partes review).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`indicia of non-obviousness (also called secondary considerations), such as
`commercial success, long-felt but unsolved needs, and failure of others.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze grounds
`based on obviousness in accordance with the above-stated principles.
`B. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, 35 U.S.C. § 103 requires us to resolve the level of
`ordinary skill in the pertinent art at the time of the effective filing date of the
`claimed invention. Graham, 383 U.S. at 17. The person of ordinary skill in
`the art is a hypothetical person who is presumed to have known the relevant
`art. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that
`may be considered in determining the level of ordinary skill in the art
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`include, but are not limited to, the types of problems encountered in the art,
`the sophistication of the technology, and educational level of active workers
`in the field. Id. In a given case, one or more factors may predominate. Id.
`Petitioner contends that a person having ordinary skill in the art
`“would have had at least a bachelor’s degree in electrical engineering or
`equivalent with at least one year of experience in the field of human
`computer interaction,” and “[a]dditional education or experience might
`substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31).
`Patent Owner does not dispute Petitioner’s definition for the purposes of its
`Response. PO Resp. 5.
`Based on our review of the record before us, we determine that
`Petitioner’s stated level of ordinary skill in the art is reasonable because it is
`consistent with the evidence of record, including the asserted prior art.
`Accordingly, for the purposes of this Decision, we adopt Petitioner’s
`definition.
`
`C. Claim Construction
`In inter partes reviews, the Board interprets claim language using the
`district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that
`standard, we generally give claim terms their ordinary and customary
`meaning, as would be understood by a person of ordinary skill in the art at
`the time of the invention, in light of the language of the claims, the
`specification, and the prosecution history. See Phillips, 415 F.3d at
`1313–14. Although extrinsic evidence, when available, may also be useful
`when construing claim terms under this standard, extrinsic evidence should
`be considered in the context of the intrinsic evidence. See id. at 1317–19.
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`Petitioner proposes claim constructions for the phrases “the image
`capture command causes the digital camera to store an image to memory” in
`claim 1, “capturing an image to the digital camera in response to . . . the
`image capture command” in claim 8, and “correlate the gesture detected
`. . . with an image capture function and subsequently capture an image using
`the digital camera” in claim 13. Pet. 8. Specifically, Petitioner asserts that
`these phrases “should be construed broadly enough to encompass
`capturing/storing video or still images,” and provides reasons supporting its
`assertion. Id. at 8–10. Patent Owner does not contest Petitioner’s proposed
`claim constructions. PO Resp. 5. We agree with Petitioner’s supporting
`reasoning and accordingly adopt Petitioner’s proposed claim constructions.
`D. Asserted Obviousness Based on Numazaki and Nonaka
`Petitioner asserts that claims 1–18 of the ’949 patent are unpatentable
`under 35 U.S.C. § 103(a) based on Numazaki and Nonaka. Pet. 10–49.
`Patent Owner provides arguments addressing this asserted ground of
`unpatentability. PO Resp. 6–29. We first summarize the references and
`then address the parties’ contentions.
`1. Numazaki
`Numazaki “relates to a method and an apparatus for generating
`information input in which input information is extracted by obtaining a
`reflected light image of a target object.” Ex. 1004, 1:8–11. An information
`input generation apparatus according to a first embodiment includes lighting
`unit 101, reflected light extraction unit 102, feature data generation unit 103,
`and timing signal generation unit 104. Id. at 10:23–28, Fig. 1. Light
`emitting unit 101 emits light that varies in intensity in time according to a
`timing signal from timing signal generation unit 104. Id. at 10:29–31. The
`light is directed onto a target object, and light reflected from the target object
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`is extracted by reflected light extraction unit 102. Id. at 10:31–35. Feature
`data generation unit 103 extracts feature data from the reflected light image.
`Id. at 10:57–58. “When the target object is a hand, it becomes possible to
`obtain the information regarding a gesture or a pointing according to the
`feature data extracted from the reflected light image of the hand, for
`example, and it becomes possible to operate a computer by using this
`obtained information.” Id. at 10:61–66.
`Figure 2, reproduced below, depicts a detailed block diagram of the
`information input generation apparatus of the first embodiment. Id. at 5:11–
`12, 11:9–11.
`
`
`Figure 2 shows that light emitted from lighting unit 101 is reflected by target
`object 106, such that an image is formed on a photo-detection plane of
`reflected light extraction unit 102. Id. at 11:11–14. Reflected light
`extraction unit 102 includes first photo-detection unit 109, second photo-
`detection unit 110, and difference calculation unit 111. Id. at 11:16–19.
`Timing control unit 112 causes lighting unit 101 to emit light when first
`photo-detection unit 109 is in a photo-detecting state and not to emit light
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`when second photo-detection unit 110 is in a photo-detecting state. Id.
`at 11:26–32. Accordingly, first photo-detection unit 109 receives the light
`emitted from lighting unit 101 that is reflected by target object 106 and
`external light, such as illumination light or sunlight, but second photo-
`detection unit 110 receives the external light only. Id. at 11:33–39.
`Difference calculation unit 111 calculates and outputs the difference
`between the image detected by first photo-detection unit 109 and the image
`detected by second photo-detection unit 110, which difference corresponds
`to the light emitted from lighting unit 101 that is reflected by target
`object 106. Id. at 11:43–55. The output from reflected light extraction unit
`102 is amplified by amplifier 113, converted from analog signals into digital
`signals by analog-to-digital converter 114, and stored at memory 115. Id.
`at 11:61–64. At an appropriate time, the data stored in memory 115 is read
`out and processed by feature data generation unit 103. Id. at 11:64–66.
`Numazaki also discloses a third embodiment that “is directed to
`another exemplary case of the feature data generation unit of the first
`embodiment, which realizes a gesture camera for recognizing the hand
`action easily and its application as a pointing device in the three-dimensional
`space.” Id. at 29:4–8. Figure 23, reproduced below, shows the feature data
`generation unit of the third embodiment. Id. at 6:4–6, 29:9–10.
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`
`Figure 23 shows that the feature data generation unit includes range image
`memory unit 331 for storing a distance matrix, shape memory unit 332 for
`storing shape interpretation rules, and shape interpretation unit 333 for
`interpreting a shape of the distance matrix according to the shape
`interpretation rules. Id. at 29:11–18. Shape interpretation unit 333 performs
`the processing for determining if a matching shape interpretation rule exists.
`Id. at 29:28–38, Fig. 25. When a matching shape is found, a command
`corresponding to that shape is outputted. Id. at 30:2–3. Thus, this
`embodiment uses hand gesture recognition as a trigger for inputting a
`command into a computer and can also be used to power on and off a device
`such as a TV or lighting equipment. Id. at 31:3–10.
`In addition, Numazaki discloses a fifth embodiment that “is directed
`to another exemplary case of the feature data generation unit in the first
`embodiment” that uses a video compression technique that extracts only
`useful image information to lower communications costs. Id. at 39:6–20.
`Figure 46, reproduced below, shows the feature data generation unit
`according to the fifth embodiment. Id. at 7:4–6, 39:21–23.
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`
`Figure 46 shows feature data generation unit 103 in conjunction with
`reflected light extraction unit 102 and visible light photo-detection
`array 351, which is generally a CCD camera for taking video images. Id.
`at 39:24–41. Images captured by visible light photo-detection array 351 are
`stored in image memory unit 352, and a mask (i.e., the image detected by
`reflected light extraction unit 102) is stored in range image memory unit
`331. Id. at 39:51–57. Extraction unit 353 superposes the original image and
`the mask, leaving only the overlapping portion. Id. at 39:57–59.
`Numazaki also discloses an eighth embodiment that “is directed to a
`system configuration incorporating the information input generation
`apparatus” described in the previous embodiments. Id. at 50:21–24.
`Figure 74, reproduced below, shows a computer equipped with the
`information input generation apparatus. Id. at 8:31–34, 50:25–26.
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`
`Figure 74 depicts a portable computer having a keyboard and a display
`integrated with the computer body. Id. at 50:26–29. Lighting unit 701 and
`photo-detection sensor unit 702 are positioned beyond the keyboard. Id.
`at 50:30–33.
`
`2. Nonaka
`Nonaka relates to a camera equipped with a remote release device.
`Ex. 1005, 2:1–3. In one embodiment, a “photographer gives a release
`instruction by means of a predetermined motion towards the camera in
`conjunction with the display timing of the aforementioned display patterns,
`the distance measurement device . . . detects this motion by the subject . . . ,
`and [an] exposure is carried out.” Id. at 3:35–38. Nonaka describes that an
`objective of this invention is to provide “a remote release device-equipped
`camera which enables remote release operations without using a transmitter
`or receiver to give a release instruction, thereby achieving a higher degree of
`freedom, good portability, and cost benefits.” Id. at 2:26–29.
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`3. Independent Claim 1
`Petitioner contends that the proposed combination of Numazaki and
`Nonaka discloses the limitations of challenged claim 1. Pet. 10–33. In
`particular, Petitioner relies on: (1) Numazaki’s first embodiment as teaching
`using the reflected light extraction unit to detect an object such as a user’s
`hand; (2) Numazaki’s third embodiment as teaching detecting when the user
`has performed a pre-registered gesture by comparing the output of the
`reflected light extraction unit to stored data reflecting pre-registered gestures
`or hand positions and instructing the device to implement a command
`corresponding to the gesture; (3) Numazaki’s fifth embodiment as teaching
`taking video images with visible light photo-detection array 351; and
`(4) Numazaki’s eighth embodiment as teaching portable devices that
`implement the information input generation apparatus described in the other
`embodiments. Id. at 20 (citing Ex. 1004, 4:32–35, 29:19–30:5, 31:3–10,
`39:21–60, 50:19–24). Regarding these embodiments, Petitioner argues that,
`[a]lthough Numazaki does not expressly describe combining all
`these features into a single portable device such that a user
`could perform a gesture command (pursuant to its third
`embodiment) that causes video capture to initiate (pursuant to
`its fifth embodiment), a [person having ordinary skill in the art]
`would have been motivated to implement Numazaki’s portable
`device in this manner pursuant to Nonaka’s image capture
`command gesture teachings.
`Id. at 20–21. For example, Petitioner argues that combining Numazaki’s
`embodiments as proposed would have improved Numazaki’s portable
`devices in the same way that Nonaka’s gesture-based image capture
`functionality benefits its camera device. Id. at 21 (citing Ex. 1003 ¶¶ 48–49;
`KSR, 550 U.S. at 417). That is, Petitioner argues that Nonaka’s “gesture-
`based image capture solution ‘achiev[es] a higher degree of freedom, good
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`portability, and cost benefits,’” and one of ordinary skill in the art “would
`have recognized that these same benefits would be realized in Numazaki’s
`laptop.” Id. (citing Ex. 1006, 2:26–29) (alteration in original). Petitioner
`also identifies certain passages in Numazaki and explains the significance of
`each passage with respect to the corresponding claim limitation. Id.
`at 25–33. We address below in turn the subject matter of each element of
`claim 1.
`
`a) Preamble: “A portable device comprising”
`For the preamble, Petitioner relies on Numazaki’s eighth embodiment
`as teaching “a computer implemented method for controlling functions on a
`portable laptop device through gestures or pointing.” Pet. 25–26 (citing
`Ex. 1004 50:38–43, Fig. 74). Patent Owner does not present arguments for
`this claim language. To the extent the preamble to claim 1 is limiting, we
`find, based on the complete record, that Petitioner has demonstrated by a
`preponderance of the evidence that the combination of Numazaki and
`Nonaka discloses this claim language.
`b) Limitation [1(a)]: “a device housing including a forward facing portion,
`the forward facing portion of the device housing encompassing an
`electro-optical sensor having a field of view and including a digital
`camera separate from the electro-optical sensor”
`Petitioner argues that one of ordinary skill in the art would have been
`motivated to implement the videoconference functionality of Numazaki’s
`fifth embodiment into the laptop of the eighth embodiment. Pet. 26. To
`accomplish this implementation, Petitioner argues that Numazaki’s
`two-camera reflected light extraction unit 102 would have been used in
`conjunction with visible light photo-detection array 351. Id. at 26–27 (citing
`Ex. 1004, 39:21–49). According to Petitioner, because the output of
`reflected light extraction unit 102 is processed to define which portions of
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`the video captured by visible photo-detection array 351 are retained, one of
`ordinary skill in the art would have understood that both reflected light
`extraction unit 102 and visible photo-detection array 351 are forward facing.
`Id. at 27–28 (citing Ex. 1004, 39:24–60, Fig. 48; Ex. 1003 ¶ 52). Petitioner
`also argues that reflected light extraction unit 102 corresponds to the claimed
`electro-optical sensor and visible light photo-detection array 351
`corresponds to the claimed digital camera.6 Id. at 28.
`Patent Owner argues that one of ordinary skill in the art would not
`have understood Numazaki’s reflected light extraction unit 102 to be the
`claimed electro-optical sensor because it comprises two separate cameras
`(i.e., photo-detection units 109, 110) and difference calculation unit 111.
`PO Resp. 8 (citing Ex. 2002 ¶ 45); see also Sur-reply 1 (citing Ex. 2002
`¶¶ 44–45) (asserting one of ordinary skill in the art “would not have
`understood the claimed ‘electro-optical sensor’ as having a ‘difference
`calculation unit’”).
`We do not find this argument persuasive. Numazaki’s reflected light
`extraction unit 102 includes first photo-detection unit 109, second photo-
`detection unit 110, and difference calculation unit 111. Ex. 1004, 11:16–19.
`Each of the first and second photo-detection units “detects the optical image
`formed on the photo-detection plane and converts it into image signals
`corresponding to the received light amounts.” Id. at 11:20–23. Difference
`
`
`6 During the oral hearing, counsel for Petitioner argued that the “primary
`theory” set forth in the Petition is that reflected light extraction unit 102, as a
`whole, satisfies the claimed electro-optical sensor, but photo-detection units
`109, 110, individually, also satisfy the claimed electro-optical sensor.
`Tr. 30:21–31:8. We do not address whether Numazaki’s photo-detection
`units individually satisfy the claimed electro-optical sensor because that
`position is not asserted in the Petition.
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`calculation unit 111 calculates the difference between the images detected
`by the first and second photodetection units and outputs the obtained
`difference. Id. at 11:53–56. More specifically, “reflected light extraction
`unit 102 sequentially outputs the reflected light amount for each pixel of the
`reflected light image” as analog signals that are amplified by amplifier 113
`and converted into digital signals by converter 114. Id. at 11:59–64.
`Numazaki’s disclosure of reflected light extraction unit 102 thus describes a
`unit that senses light and converts the sensed light into electronic signals,
`which is consistent with the plain meaning of an “electro-optical sensor.”7
`As such, we agree with Petitioner’s assertion that reflected light extraction
`unit 102 satisfies the claimed electro-optical sensor.
`Furthermore, in support of its position that reflected light extraction
`unit 102 is an electro-optical sensor as claimed, Petitioner contends that
`“although the ’949 Patent does not define ‘electro-optical sensor,’ dependent
`claim 7 specifies that the sensor is either a ‘CCD detector’ or [a] ‘CMOS
`detector.’” Pet. 28–29 (citing Ex. 1001, 15:50–52). Petitioner then asserts
`that Numazaki expressly discloses that reflected light extraction unit 102 has
`a photo-detection section comprising CMOS sensors or CCD image sensors.
`Id. at 29 (citing Ex. 1004, 12:56–57, 15:23–27). In addition, Patent Owner’s
`expert, Mr. Occhiogrosso, acknowledges that photo-detection units 109, 110
`are electro-optical sensors. Ex. 1019, 15:21–16:3. Accordingly, we
`determine based on the full record that Numazaki’s reflected light extraction
`unit 102 provides an electro-optical sensing function.
`
`
`7 The ’949 patent does not define “electro-optical sensor,” and neither party
`proffers a construction of the term.
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`As discussed above, difference calculation unit 111 merely processes
`the image signals produced by the first and second photodetection units and
`does not alter the electro-optical sensing function of reflected light
`extraction unit 102. See Ex. 1004, 11:53–56. Accordingly, we are not
`persuaded that the inclusion of difference calculation unit 111 would have
`suggested to one of ordinary skill in the art that reflected light extraction unit
`102 is not an electro-optical sensor.
`Next, Patent Owner argues that the Petition wrongly contends that
`photo-detection sensor unit 702 in Figure 74 of Numazaki “is or includes”
`one or both of Numazaki’s reflected light extraction unit 102 and visible
`light photo-detection array 351. PO Resp. 8 (citing Pet. 16, 17, 25–29;
`Ex. 2002 ¶ 46). According to Patent Owner, “Numazaki is silent regarding
`the ‘photo-detection sensor unit’ in Fig. 74 as being or including one or
`more of the ‘reflected light extraction unit 102’ and the ‘visible light photo-
`detection array 351.’” Id. at 9 (citing Ex. 2002 ¶ 47). Patent Owner further
`argues that:
`The mere fact that Numazaki’s eighth embodiment may
`“incorporate the information input generation apparatus” of
`Numazaki’s fifth embodiment, Ex. 1004, 50:21–24, does not
`mean to a [person having ordinary skill in the art] that the
`“photodetection sensor unit” in Fig. 74 is or includes one or
`more of the “reflected light extraction unit 102” and the “visible
`light photo-detection array 351” from Fig. 46 (i.e., the claimed
`“electro-optical sensor” and “digital camera,” respectively).
`PO Resp. 10–11 (citing Ex. 2002 ¶ 49).
`Petitioner replies by arguing that Patent Owner’s argument
`mischaracterizes the proposed combination because “[t]he Petition did not
`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 4–5.
`We agree with Petitioner on this issue. The Petition asserts that one of
`ordinary skill in the art would have been motivated to implement the
`videoconference functionality of Numazaki’s fifth embodiment into the
`laptop of the eighth embodiment. Pet. 26. The Petition further asserts that
`this implementation would have been accomplished by using reflected light
`extraction unit 102 and visible photo-detection array 351 from Numazaki’s
`fifth embodiment. Id. at 26–27 (citing Ex. 1004, 39:21–49, Fig. 46). Thus,
`rather than asserting that photo-detection sensor unit 702 of Numazaki’s
`eighth embodiment “is or includes” one or both of reflected light extraction
`unit 102 and visible light photo-detection array 351, the Petition proposes
`modifying Numazaki’s eighth embodiment by including the reflected light
`extraction unit and the visible light photo-detection array from Numazaki’s
`fifth embodiment to provide videoconference functionality. Id. at 26–27;
`see also id. at 20–21 (arguing one of ordinary skill in the art would have
`been motivated to implement Numazaki’s portable device “such that a user
`could perform a gesture command (pursuant to its third embodiment) that
`causes video capture to initiate (pursuant to its fifth embodiment)”).
`Accordingly, we do not find Patent Owner’s argument persuasive.
`We also disagree with Patent Owner’s argument that Petitioner’s Reply
`argument seeks to change Petitioner’s position with respect to Numazaki’s
`fifth and eighth embodiments. See Sur-reply 2. Specifically, Patent Owner
`contests Petitioner’s assertion regarding the Petition not suggesting that
`Numazaki expressly teaches that the eighth embodiment’s laptop includes
`the fifth embodiment’s components based on the statement in the Petition
`that Numazaki “expressly contemplates incorporating these early-described
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`embodiments in the eighth embodiment portable devices.” Id. at 3 (citing
`Reply 5; Pet. 23). This statement, however, discusses incorporating aspects
`of the first seven embodiments into the eighth embodiment and does not
`indicate that the eighth embodiment includes any aspects of the early
`embodiments prior to any modification.
`For the above reas