IPR2021-00922
`Patent 8,553,079
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`APPLE INC.
`
`Petitioner,
`v.
`GESTURE TECHNOLOGY PARTNERS, LLC
`
`Patent Owner
`__________________
`Inter Partes Review No. IPR2021-00922
`Patent No. 8,553,079
`PATENT OWNER’S RESPONSE TO THE PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,553,079
`
`Filed on behalf of Patent Owner by:
`
`Todd E. Landis (Reg. No. 44,200)
`2633 McKinney Ave., Suite 130
`Dallas, TX 75204
`
`John Wittenzellner (Reg. No. 61,662)
`1735 Market Street, Suite A #453
`Philadelphia, PA 19103
`
`Adam B. Livingston (Reg. No. 79,173)
`601 Congress Avenue, Suite 600
`Austin, TX 78701
`WILLIAMS SIMONS & LANDIS PLLC
`
`
`
`

`

`IPR2021-00922
`Patent 8,553,079
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`THE BOARD DOES NOT HAVE JURISDICTION OVER EXPIRED
`PATENTS ........................................................................................................ 1
`PETITIONER’S ASSERTED GROUNDS OF UNPATENTABILITY ........ 3
`
`
`I.
`
`II.
`
`III.
`
`IV. PROCEDURAL HISTORY ............................................................................ 3
`
`V.
`
`THE ’079 PATENT ......................................................................................... 3
`
`A. The Technology of the ’079 Patent ........................................................ 3
`B.
`Prosecution History of the ’079 Patent ................................................... 5
`C. Level of Ordinary Skill in the Art .......................................................... 6
`D. Claim Construction ................................................................................. 6
`1.
`“wherein the light source includes a plurality of light emitting
`diodes”......................................................................................... 6
`VI. RESPONSE TO ISSUES RAISED IN THE PETITION ................................ 8
`
`2.
`
`A. Ground 1 – Numazaki Does Not Render Claims 1, 2, 4-14, 17, 19,
`21, 22, 24-28, and 30 Obvious ............................................................... 8
`1.
`Numazaki does not render obvious independent claim 1
`because it does not teach or suggest claim element [1(b)] ......... 8
`Numazaki does not render obvious dependent claims 2, 4-6,
`and 8-10 .....................................................................................13
`Numazaki does not render obvious dependent claim 7 ............13
`Numazaki does not render obvious independent claim 11
`because it does not teach or suggest claim element [11(b)] .....16
`Dependent Claims 12-14 and 19 ...............................................17
`Dependent Claim 17 .................................................................17
`
`3.
`4.
`
`5.
`6.
`
`-i-
`
`

`

`
`
`IPR2021-00922
`Patent 8,553,079
`
`7.
`
`8.
`
`Numazaki does not render obvious independent claim 21
`because it does not teach or suggest claim element [21(a)]......18
`Numazaki does not render obvious independent claim 21
`because it does not teach or suggest claim element [21(c)]......18
`Dependent Claims 22, 24-26, 28, and 30 ..................................19
`9.
`10. Dependent Claim 27 .................................................................19
`B. Ground 2 – The Combination of Numazaki and Numazaki ’863
`Does Not Render Claims 3, 15, and 23 obvious .................................. 20
`1.
`Dependent Claim 3....................................................................20
`2.
`Dependent Claims 15 and 23 ....................................................22
`C. Ground 3 – The Combination of Numazaki and DeLuca Does Not
`Render Claims 16 and 29 Obvious ....................................................... 22
`D. Ground 4 – The Combination of Numazaki and DeLeeuw Does
`Not Render Claim 18 Obvious ............................................................. 22
`E. Ground 5 – The Combination of Numazaki and Maruno Does Not
`Render Claim 20 Obvious .................................................................... 23
`VII. CONCLUSION ..............................................................................................23
`
`
`
`
`
`-ii-
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`IPR2021-00922
`Patent 8,553,079
`
`
`Cases
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
` 567 F.3d 1314 (Fed. Cir. 2009) ............................................................................13
`
`Galderma Labs., L.P. v. Tolmar, Inc.,
` 737 F.3d 731 (Fed. Cir. 2013) ..............................................................................14
`
`Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC,
` 138 S. Ct. 1365 (2018) ........................................................................................... 1
`
`Phillips v. AWH Corp.,
` 415 F.3d 1303 (Fed. Cir. 2005) .............................................................................. 6
`
`
`
`-iii-
`
`

`

`IPR2021-00922
`Patent 8,553,079
`
`EXHIBIT LIST
`
`Exhibit
`
`2002
`
`Description
`Declaration of Benedict Occhiogrosso, in Support of Gesture
`
`Technology Partners, LLC's Patent Owner Response
`
`
`
`
`
`
`-iv-
`
`

`

`IPR2021-00922
`Patent 8,553,079
`
`I.
`
`INTRODUCTION
`
`Gesture Technology Partners, LLC (“Patent Owner”) respectfully submits this
`
`Response to Apple Inc.’s (“Petitioner”) Petition for Inter Partes Review (“IPR”) No.
`
`IPR2021-00922 (the “Petition” or “Pet.”) of U.S. Patent No. 8,553,079 (the “’079
`
`Patent”).
`
`The Board does not have jurisdiction over the ’079 Patent because it has
`
`expired and thus this IPR should be terminated. Further, Petitioner fails to show
`
`unpatentability of claims 1-30 of the ’079 Patent (the “Challenged Claim(s)”)
`
`because Petitioner’s Grounds fail to disclose or render obvious one or more elements
`
`of each Challenged Claim.
`
`II.
`
`THE BOARD DOES NOT HAVE JURISDICTION OVER EXPIRED
`PATENTS
`
`In Oil States, the Supreme Court explained that the “decision to grant a patent
`
`is a matter involving public rights—specifically, the grant of a public franchise.” Oil
`
`States Energy Servs., LLC v. Greene's Energy Grp., LLC, 138 S. Ct. 1365, 1373
`
`(2018). “Specifically, patents are public franchises that the Government grants to
`
`the inventors of new and useful improvements.” Id. (internal quotation marks
`
`omitted). The Court explained that “Congress [has] significant latitude to assign
`
`[the] adjudication of public rights to entities other than Article III courts.” Id. at
`
`1368. In exercising its “significant latitude,” Congress grants public franchises
`
`“subject to the qualification that the PTO has the authority to reexamine—and
`
`-1-
`
`

`

`
`perhaps cancel—a patent claim in an inter partes review.” Id. at 1368, 1374 (internal
`
`IPR2021-00922
`Patent 8,553,079
`
`quotation marks omitted). Accordingly, so long as the public franchise exists, the
`
`PTO may have jurisdiction to amend and cancel the claims of the patent (e.g., via
`
`inter partes review).
`
`When a patent expires, however, the public franchise ceases to exist and the
`
`franchisee (e.g., the patent owner) no longer has the right to exclude others. At most,
`
`the franchisee may be entitled to collect damages from the public franchise that
`
`formerly existed through an infringement action in district court. But because the
`
`public franchise no longer exists, the PTO has nothing in its authority to cancel or
`
`amend. Expiration removes the patent from the PTO’s jurisdiction and returns it to
`
`the sole jurisdiction of the Article III courts, which have exclusive authority to
`
`govern claims for damages. If this were not so, the PTO would purport to have
`
`authority to retroactively modify a public franchise that no longer exists, in a setting
`
`where the expired public franchise does not enjoy any presumption of validity and
`
`in which amendment of claims is no longer permitted.
`
`The ’079 Patent issued in October 2013 and expired in November 2019, long
`
`before the Petition was filed on May 18, 2021. With the expiration of the patent in
`
`November 2019, the Board ceased to have jurisdiction over the ’079 Patent, and this
`
`IPR should be terminated as a result.
`
`-2-
`
`

`

`
`III.
`
`IPR2021-00922
`Patent 8,553,079
`
`PETITIONER’S ASSERTED GROUNDS OF UNPATENTABILITY
`
`Prior Art
`
`Basis
`
`Challenged Claims
`
`Numazaki
`
`§ 103 (Obviousness) 1, 2, 4-14, 17, 19, 21, 22,
`
`24-28, and 30
`
`Numazaki and Numazaki ’863 § 103 (Obviousness) 3, 15, and 23
`
`Numazaki and DeLuca
`
`§ 103 (Obviousness) 16 and 29
`
`Numazaki and DeLeeuw
`
`§ 103 (Obviousness) 18
`
`Numazaki and Maruno
`
`§ 103 (Obviousness) 20
`
`
`IV.
`
`PROCEDURAL HISTORY
`
`Petitioner filed this Petition for Inter Partes Review of the ’079 Patent on May
`
`18, 2021. Patent Owner submitted a Preliminary Response to the Petition on August
`
`30, 2021. The Board instituted inter partes review as to the Challenged Claims on
`
`the Grounds raised in the Petition.
`
`V.
`
`THE ’079 PATENT
`A. The Technology of the ’079 Patent
`
`The ’079 Patent is entitled “More Useful Man Machine Interfaces and
`
`Applications.” See Ex. 1001. The ’079 Patent is directed towards methods and
`
`apparatuses “for determining a gesture illuminated by a light source.” Id., Abstract.
`
`These methods and apparatuses “utilize the light source to provide illumination
`
`-3-
`
`

`

`
`through a work volume above the light source. A camera is positioned to observe
`
`IPR2021-00922
`Patent 8,553,079
`
`. . . the gesture performed in the work volume.” Id.
`
`In some embodiments, the ’079 Patent describes a computer device with one
`
`or more “cameras to look at points on, typically, the hand or the finger, or objects
`
`held in the hand of the user, which are used to input data to the computer.” Id., 1:66-
`
`2:2. Figure 2, which is reproduced below, depicts some embodiments in which a
`
`computer device (e.g., laptop) includes the functionality of the invention.
`
`Ex. 1001, Fig. 2
`
`
`
`-4-
`
`

`

`In some embodiments, the ’079 Patent describes that the computer device can
`
`IPR2021-00922
`Patent 8,553,079
`
`
`
`“determine the pointing direction vector 160 of the user's finger (for example
`
`pointing at an object displayed on screen 107), or the position and orientation of an
`
`object held by the user.” Id., 2:54-60. The ’079 Patent also describes: “finger
`
`position data can be used to determine gestures such as pinch or grip, and other
`
`examples of relative juxtaposition of objects with respect to each other.” Id. Further,
`
`the ’079 Patent describes: “[f]inger gestures comprising a sequence of finger
`
`movements can also be detected by analyzing sequential images sets such as the
`
`motion of the finger.” Id., 3:48-50. Further still, the ’079 Patent describes that a
`
`target (e.g., retro-reflective material) may be placed on an object (e.g., user’s finger)
`
`to augment the contrast of the object. See Id., 3:63-4:14.
`
`B.
`
`Prosecution History of the ’079 Patent
`
`The ’079 patent issued from U.S. Patent Application Serial No. 13/714,748
`
`(the “’748 application”), which filed on December 14, 2012. The ’748 application
`
`is a continuation of U.S. Patent Application Serial No. 12/700,055 (the “’055
`
`application”), which filed on February 4, 2010. The ’055 application is a
`
`continuation of U.S. Patent Application Serial No. 10/866,191 (the “’191
`
`application”), which filed on June 14, 2004. The ’191 application is a continuation
`
`of U.S. Patent Application Serial No. 09/433,297 (the “’297 application”), which
`
`-5-
`
`

`

`
`filed on November 3, 1999. The ’297 application claims priority to U.S. Provisional
`
`IPR2021-00922
`Patent 8,553,079
`
`Application Serial No. 60/107,652, which filed on November 9, 1998.
`
`C. Level of Ordinary Skill in the Art
`
`For the purposes of this Response only, Patent Owner does not dispute the
`
`level of skill of a person of ordinary skill in the art (“POSITA”) identified in the
`
`Petition.
`
`D. Claim Construction
`
`Except as noted below, Patent Owner does not contest the constructions
`
`proposed in the Petition for the purpose of the Response. See Pet., pp. 5-6.
`
`“The ‘ordinary meaning’ of a claim term is its meaning to the ordinary artisan
`
`after reading the entire patent.” Phillips v. AWH Corp., 415 F.3d 1303, 1312, 1321
`
`(Fed. Cir. 2005) (en banc).
`
`1.
`
`“wherein the light source includes a plurality of light
`emitting diodes”
`Dependent claim 3 recites “wherein the light source includes a plurality of
`
`light emitting diodes.” The light source with the plurality of light emitting diodes
`
`(LEDs) illuminates the gesture being performed in the workspace. Compare claim
`
`-6-
`
`

`

`
`with claim element [1(b)]1. Claim 3, when read in light of the specification, means
`
`IPR2021-00922
`Patent 8,553,079
`
`the light source illuminates the gesture by having two or more (i.e., a plurality) LEDs
`
`of the light source emit light at the same time. See Ex. 2002, ¶ 40. Claim 1 requires
`
`that the gesture performed in the work volume is illuminated by the light source, not
`
`a portion of the light source. As a result, the “plurality of light emitting diodes”
`
`recited in claim 3 must illuminate the work volume, not a subset of the LEDs.
`
`This is consistent with the specification, which describes the purpose of the
`
`light source as increasing the amount of light incident to the object (e.g., finger)
`
`performing the gesture. Ex. 1001, 3:1-3 (“Light from below, such as provided by
`
`[the light source] can be used to illuminate the finger that typically looks bright under
`
`such illumination”). By having two or more LEDs emitting light at the same time
`
`(as opposed to only one), the object (e.g., finger) performing the gesture will appear
`
`brighter, which increases the accuracy of the gesture recognition. That is a why a
`
`POSITA would understand that this claim requires that two or more LEDs of the
`
`light source emit light at the same time. See Ex. 2002, ¶ 41. Construing this term to
`
`require that only one light emitting diode of the plurality be used to illuminate would
`
`render claim 3 superfluous and would be contrary to the specification. Moreover,
`
`
`1 For convenience of reference only, this Response adopts the claim element
`
`numbering presented in the Petition.
`
`-7-
`
`

`

`
`including extra light emitting diodes that are not used for illumination would be
`
`IPR2021-00922
`Patent 8,553,079
`
`nonsensical because doing so would only increase the circuit complexity of the light
`
`source with no additional benefit. See Ex. 2002, ¶ 41.
`
`Accordingly, claim 3 is properly construed to mean the light source
`
`illuminates the gesture by having multiple LEDs of the light source emit light at the
`
`same time. Dependent claims 15 and 23 recite similar limitations, and thus claims
`
`15 and 23 should be construed in the same way as claim 3 for at least the same
`
`reasons. See Ex. 2002, ¶ 42.
`
`VI.
`
`RESPONSE TO ISSUES RAISED IN THE PETITION
`A. Ground 1 – Numazaki Does Not Render Claims 1, 2, 4-14, 17, 19,
`21, 22, 24-28, and 30 Obvious
`
`Numazaki (the “Ground 1 Reference”) does not render claims 1, 2, 4-14, 17,
`
`19, 21, 22, 24-28, and 30 obvious because it does not teach or suggest every claim
`
`limitation.
`
`1.
`
`Numazaki does not render obvious independent claim 1
`because it does not teach or suggest claim element [1(b)]
`Claim element [1(b)] recites “providing a camera oriented to observe a gesture
`
`performed in the work volume, the camera being fixed relative to the light source;
`
`and determining, using the camera, the gesture performed in the work volume and
`
`illuminated by the light source.” Numazaki does not teach or suggest this limitation.
`
`-8-
`
`

`

`The Petition contends that Numazaki’s “photo-detection sensor unit” in Fig.
`
`IPR2021-00922
`Patent 8,553,079
`
`
`
`74 is “a camera,” as required by claim element [1(b)]. See Pet., pp. 12-14. Patent
`
`Owner disagrees. Numazaki is silent regarding the “photo-detection sensor unit” in
`
`Fig. 74 being a camera. See Ex. 2002, ¶ 48. Numazaki’s “photo-detection sensor
`
`unit” appears for the first time in Numazaki’s eighth embodiment. Numazaki
`
`generically teaches the “eighth embodiment is directed to a system configuration
`
`incorporating the information input generation apparatus of the present invention as
`
`described in [embodiments 1-7].” Ex. 1004, 50:21-24. None of embodiments 1-7
`
`in Numazaki mention a “photo-detection sensor unit,” and thus none of
`
`embodiments 1-7 teach or suggest the “photo-detection sensor unit” in Fig. 74 as
`
`being a camera, as required by claim element [1(b)]. See Ex. 2002, ¶ 48.
`
`For example, an information input generation apparatus of Numazaki’s first
`
`embodiment is reproduced below:
`
`-9-
`
`

`

`
`
`IPR2021-00922
`Patent 8,553,079
`
`
`
`Ex. 1004, 5:5-11, Fig. 2. As shown, Fig. 2 is devoid of a “photo-detection sensor
`
`unit” and Numazaki does not identify any component (or grouping of components)
`
`in Fig. 2 as being the “photo-detection sensor unit.” See Ex. 2002, ¶ 49.
`
`The Petition contends that each of Numazaki’s “photo-detection units” in Fig.
`
`2 (e.g., photo-detection unit 109, photo-detection unit 110) is a camera. Pet., pp. 6,
`
`7, 12-14; Benderson Declaration (Ex. 1010), ¶¶ 35-36. Even assuming arguendo
`
`this is true, Numazaki still fails to teach that the “photo-detection sensor unit” in Fig.
`
`74 is a “photo-detection unit” from Fig. 2. Moreover, the Petition does not explain
`
`why a POSITA would understand the “photo-detection sensor unit” in Fig. 74 to be
`
`a “photo-detection unit” from Fig. 2. See Ex. 2002, ¶¶ 50-51. The mere fact that
`
`Numazaki’s eighth embodiment may “incorporate the information input generation
`
`apparatus” of Numazaki’s first embodiment, Ex. 1004, 50:21-24, does not mean to
`
`-10-
`
`

`

`
`a POSITA that the “photo-detection sensor unit” in Fig. 74 is a “photo-detection
`
`IPR2021-00922
`Patent 8,553,079
`
`unit” from Fig. 2, and thus does not mean that the “photo-detection sensor unit” is a
`
`camera. See Ex. 2002, ¶¶ 50-51.
`
`Further, even assuming arguendo that Numazaki’s “photo-detection sensor
`
`unit” in Fig. 74 includes a “photo-detection unit” from Fig. 2, and that Numazaki’s
`
`“photo-detection unit” in Fig. 2 is a camera, Numazaki still does not teach or suggest
`
`“determining, using the camera, the gesture performed in the work volume and
`
`illuminated by the light source,” as recited by claim element [1(b)]. A POSITA
`
`would interpret claim element [1(b)] as requiring the gesture be illuminated by the
`
`light source while the camera is capturing one or more images of the gesture. See
`
`Ex. 2002, ¶ 52 (citing Ex. 1001, Abstract, 3:1-8).
`
`Numazaki requires two photo-detection units (i.e., two cameras) to perform
`
`an analysis. Numazaki discloses a “reflected light extraction unit 102” with a “first
`
`photo-detection unit 109,” a “second photo-detection unit 110,” and a “difference
`
`calculation unit 111.” Ex. 1004, 10:57-66; 11:20-51; Fig. 2. The first photo-
`
`detection unit 109 requires that a lighting unit 101 emit light during detection. Id. at
`
`11:26-30, Fig. 2. Later, at a different time, when first photo-detection unit 109 is
`
`not active, the second photo-detection unit 110 detects while lighting unit 101 is not
`
`active. Id., 11:30-32, Fig. 2. Those two images—the image from first photo-
`
`detection unit 109 and the image from the second photo-detection unit 110—are then
`
`-11-
`
`

`

`
`subtracted from each other before the information is used in the remainder of the
`
`IPR2021-00922
`Patent 8,553,079
`
`system. See id., 11:43-56. Thus, Numazaki requires: (1) two, not one, photo-
`
`detection units; (2) a lighting unit for illumination; (3) timing circuitry that
`
`selectively activates the lighting unit based on which photo-detection unit is active
`
`(i.e., the lighting unit is off when one of the photo-detection units is active); and (4)
`
`circuitry for subtracting one image from another. See Ex. 2002, ¶ 53.
`
`On the one hand, if “a camera” in claim element [1(b)] is interpreted to mean
`
`“only one camera,” then Numazaki fails to teach or suggest claim element [1(b)]
`
`because, as discussed above, Numazaki always requires two photo-detection units
`
`(i.e., two cameras). Petitioner admits that Numazaki requires two photo-detection
`
`units to perform an analysis. See Pet., pp. 13-14. The Petition does not address this
`
`deficiency in Numazaki, nor does it assert that it would have obvious to a POSITA
`
`to modify Numazaki such that it meets this claim element. See Ex. 2002, ¶ 54.
`
`On the other hand, if “a camera” in claim element [1(b)] is interpreted to mean
`
`“multiple cameras” (e.g., two cameras), Numazaki still fails to teach or suggest claim
`
`element [1(b)]. Claim element [1(b)] requires the gesture be illuminated by the light
`
`source when any of the cameras is capturing an image of the gesture. But as
`
`discussed above, Numazaki requires two photo-detection units (i.e., two cameras)
`
`and Numazaki’s lighting unit (i.e., light source) is not active when one of the photo-
`
`detection units is capturing an image of the gesture. This is contrary to what is
`
`-12-
`
`

`

`
`required by claim element [1(b)]. The Petition does not address this deficiency in
`
`IPR2021-00922
`Patent 8,553,079
`
`Numazaki, nor does it assert that it would have obvious to a POSITA to modify
`
`Numazaki such that it meets this claim element. See Ex. 2002, ¶ 55.
`
`For at least these reasons, Numazaki fails to teach or suggest claim element
`
`[1(b)]. Accordingly, Numazaki fails to render independent claim 1 unpatentable.
`
`2.
`
`Numazaki does not render obvious dependent claims 2, 4-6,
`and 8-10
`Each of claims 2, 4-6, and 8-10 depends from and adds limitations to claim 1.
`
`Numazaki fails to render claim 1 unpatentable, therefore, Numazaki fails to render
`
`dependent claim 2, 4-6, and 8-10 unpatentable for at least the same reasons. See Ex.
`
`2002, ¶ 57.
`
`3.
`Numazaki does not render obvious dependent claim 7
`Dependent claim 7 recites “The method according to claim 1 further including
`
`providing a target positioned on a user that is viewable in the work volume.” Claim
`
`7 depends from and adds limitations to claim 1. Numazaki fails to render claim 1
`
`unpatentable, therefore, Numazaki fails to render dependent claim 7 unpatentable
`
`for at least the same reasons.
`
`Moreover, a claim is not obvious if the prior art teaches away from the
`
`invention. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314,
`
`1326 (Fed. Cir. 2009). A reference teaches away when a person of ordinary skill,
`
`upon reading the reference, would be led in a direction divergent from the path that
`
`-13-
`
`

`

`
`was taken in the claim. See Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738
`
`IPR2021-00922
`Patent 8,553,079
`
`(Fed. Cir. 2013).
`
`Claim 7 explicitly requires a “target positioned on a user that is visible in the
`
`work volume.” Ex. 1001, claim 7 (emphasis added). Accordingly, the “target” is
`
`not a natural feature of the user but rather something that is external to the user and
`
`placed on the user. Example targets disclosed in the specification of the ’079 Patent
`
`include “retroreflective datums, colored datums such as rings or LED light sources.”
`
`Ex. 1001, 4:61-63. See Ex. 2002, ¶ 59.
`
`Numazaki teaches away from a target positioned on the user:
`
`There are also devices, some of which are already in
`practical use, for capturing a shape or a motion of the hand
`or the body by attaching color markers or light emitting
`elements to the hand or a part of the body, and detecting
`these color markers or light emitting elements by using the
`image.
`
`However, the requirement for mounting some element at
`every occasion of its operation is a great demerit from a
`viewpoint of the convenience of the user, and can limit its
`application range significantly. Moreover, as can be seen
`in the example of the data glove, a device that requires to
`mount some element on the movable part such as hand
`tends to have a problem of the durability.
`
`Ex. 1004, 3:26-39 (emphasis added). Numazaki explicitly criticizes, discredits, and
`
`discourages the use of targets (i.e., Numazaki’s markers or elements). Accordingly,
`
`upon reading Numazaki, a POSITA would be led in a path (i.e., an anti-target path)
`
`-14-
`
`

`

`
`that diverges from the path in claim 7. Thus, Numazaki teaches away from the
`
`IPR2021-00922
`Patent 8,553,079
`
`subject-matter of claim 7 and does not render claim 7 obvious. See Ex. 2002, ¶ 60.
`
`The Petition attempts to overcome this explicit teaching away in Numazaki
`
`by arguing that a POSITA would accept the tradeoff of durability problems
`
`associated with a hand-based target (e.g., ring) for improved accuracy. Pet., pp. 23-
`
`24 (“durability concerns are implicated by a ring target, and many adults wear rings
`
`routinely while typing with no ill effect”). This argument is flawed because the
`
`Petition fails to explain how performing gestures in front of a camera for recognition
`
`is the same as typing on a keyboard. Id. See also Ex. 2002, ¶ 61. Moreover, this
`
`argument incorrectly assumes that durability is the only drawback to hand-based
`
`targets. To the contrary, Numazaki explicitly discloses that user inconvenience is a
`
`drawback of hand-based targets. See Ex. 1004, 3:32-34. Indeed, the need to put on
`
`the hand-based target each time the apparatus is being used, the possibility of losing
`
`the hand-based target (e.g., rings are often lost), the need to share the hand-based
`
`target among the multiple users sharing the apparatus (e.g., sanitation issues), a loss
`
`of tactile sensation when some hand-based targets (e.g., gloves) are worn, and the
`
`fact that hand-based targets would interfere with existing jewelry (e.g., wedding
`
`ring) worn by users, etc. are all inconveniences associated with hand-based targets.
`
`These inconveniences are simply too great to overcome the explicit teaching away
`
`-15-
`
`

`

`
`in Numazaki and lead a POSITA in a path divergent from the path required by claim
`
`IPR2021-00922
`Patent 8,553,079
`
`7. See Ex. 2002, ¶ 61. Thus, Numazaki does not render claim 7 obvious.
`
`4.
`
`Numazaki does not render obvious independent claim 11
`because it does not teach or suggest claim element [11(b)]
`Claim element [11(b)] recites “a camera in fixed relation relative to the light
`
`source and oriented to observe a gesture performed by the human body part in the
`
`work volume; and a processor adapted to determine the gesture performed in the
`
`work volume and illuminated by the light source based on the camera output.” The
`
`Petition relies on and refers back to claim element [1(b)] to argue that claim element
`
`[11(b)] is obvious in view of Numazaki. Pet., p. 29. Accordingly, Numazaki fails
`
`to teach or suggest claim element [11(b)] for the same reasons above with respect to
`
`claim element [1(b)]. See Ex. 2002, ¶ 63.
`
`The Petition contends that Numazaki’s “feature data generation unit” is “a
`
`processor,” as recited by claim element [11(b)]. Pet., pp. 29-30. A POSITA would
`
`interpret claim element [11(b)] as requiring the gesture be illuminated by the light
`
`source while the camera is capturing one or more images of the gesture. See Ex.
`
`2002, ¶ 64 (citing Ex. 1001, Abstract, 3:1-8). As discussed above in reference to
`
`claim element [1(b)], regardless of whether “a camera” is interpreted to mean “only
`
`one camera” or “multiple cameras” (e.g., two cameras), Numazaki does not meet
`
`this requirement. Accordingly, even assuming arguendo that Numazaki’s “feature
`
`-16-
`
`

`

`
`data generation unit” is “a processor,” Numazaki still does not teach or suggest claim
`
`IPR2021-00922
`Patent 8,553,079
`
`element [11(b)], and thus Numazaki fails to render independent claim 11
`
`unpatentable. See Ex. 2002, ¶ 64.
`
`5.
`Dependent Claims 12-14 and 19
`Each of claims 12-14 and 19 depends from and adds limitations to claim 11.
`
`Numazaki fails to render claim 11 unpatentable, therefore, Numazaki fails to render
`
`dependent claims 12-14 and 19 unpatentable for at least the same reasons. See Ex.
`
`2002, ¶ 65.
`
`6.
`Dependent Claim 17
`Dependent claim 17 recites “The computer apparatus of claim 11 further
`
`including a target that is viewable by the camera when in the work volume.” Claim
`
`17 depends from and adds limitations to claim 11. Numazaki fails to render claim
`
`11 unpatentable, therefore, Numazaki fails to render dependent claim 17
`
`unpatentable for at least the same reasons. See Ex. 2002, ¶ 66.
`
`Moreover, as discussed above in reference to claim 7, the “target” is
`
`something that is external to the user and placed on the user. As also discussed
`
`above in referenced to claim 7, Numazaki explicitly criticizes, discredits, and
`
`discourages the use of targets (i.e., Numazaki’s markers or elements). See Ex. 1004,
`
`3:26-39. Accordingly, upon reading Numazaki, a POSITA would be led in a path
`
`(i.e., an anti-target path) that diverges from the path in claim 17. Thus, Numazaki
`
`-17-
`
`

`

`
`teaches away from the subject-matter of claim 17 and does not render claim 17
`
`IPR2021-00922
`Patent 8,553,079
`
`obvious. See supra, claim 7. See also Ex. 2002, ¶ 67.
`
`7.
`
`Numazaki does not render obvious independent claim 21
`because it does not teach or suggest claim element [21(a)].
`Claim element [21(a)] recites “providing a camera oriented to observe a
`
`gesture performed in a work volume above the camera.” The Petition relies on and
`
`refers back to claim elements [1(b)] and [11(b)] to argue that claim element [21(a)]
`
`is obvious in view of Numazaki. See Pet., p. 33. Accordingly, Numazaki fails to
`
`teach or suggest claim element [21(a)] for the same reasons above with respect to
`
`claim elements [1(b)] and [11(b)]. See supra, claim elements [1(b)] and [11(b)]. See
`
`also Ex. 2002, ¶ 69.
`
`8.
`
`Numazaki does not render obvious independent claim 21
`because it does not teach or suggest claim element [21(c)].
`Claim element [21(c)] recites “detecting, using the camera, a gesture
`
`performed by at least one of a user’s fingers and a user’s hand in the work volume.”
`
`A POSITA would interpret claim element [21(c)] as requiring the gesture be
`
`illuminated by the light source while the camera is capturing one or more images of
`
`the gesture. Ex. 2002, ¶ 70 (citing Ex. 1001, Abstract, 3:1-8). The Petition relies on
`
`and refers back to claim elements [1(b)] and [11(b)] to argue that claim element
`
`[21(c)] is obvious in view of Numazaki. See Pet., p. 33. Accordingly, Numazaki
`
`fails to teach or suggest claim element [21(c)] for the same reasons above with
`
`-18-
`
`

`

`
`respect to claim elements [1(b)] and [11(b)]. See supra, claim elements [1(b)] and
`
`IPR2021-00922
`Patent 8,553,079
`
`[11(b)]. See also Ex. 2002, ¶ 70.
`
`Accordingly, Numazaki fails to render independent claim 21 unpatentable.
`
`9.
`Dependent Claims 22, 24-26, 28, and 30
`Each of claims 22, 24-26, 28, and 30 depends from and adds limitations to
`
`claim 21. Numazaki fails to render claim 21 unpatentable, therefore, Numazaki fails
`
`to render dependent claims 22, 24-26, 28, and 30 unpatentable for at least the same
`
`reasons. See Ex. 2002, ¶ 71.
`
`10. Dependent Claim 27
`Dependent claim 27 recites “The method according to claim 21 further
`
`including providing a target positioned on the user that is viewable by the camera.”
`
`Claim 27 depends from and adds limitations to claim 21. Numazaki fails to render
`
`claim 21 unpatentable, therefore, Numazaki fails to render dependent claim 27
`
`unpatentable for at least the same reasons. See Ex. 2002, ¶ 72.
`
`Moreover, as discussed above in reference to claim 7, the “target” recited by
`
`claim 27 is not a natural feature of the user but rather something that is external to
`
`the user and placed on the user. As also discussed above in referenced to claim 7,
`
`Numazaki explicitly criticizes, discredits, and discourages the use of targets (i.e.,
`
`Numazaki’s markers or elements). See Ex. 1004, 3:26-39. Accordingly, upon
`
`reading Numazaki, a POSITA would be led in a path (i.e., an anti-target path) that
`
`-19-
`
`

`

`
`diverges from the path in claim 27. Thus, Numazaki teaches away from the subject-
`
`IPR2021-00922
`Patent 8,553,079
`
`matter of claim 27 and does not render claim 27 obvious. See claim 7, supra. See
`
`also Ex. 2002, ¶ 73.
`
`B. Ground 2 – The Combination of Numazaki and Numazaki ’863
`Does Not Render Claims 3, 15, and 23 obvious
`
`Numazaki and Numazaki ’863 (the “Ground 2 References”) do not render
`
`claims 3, 15, and 23 obvious because they do not teach or suggest every claim
`
`limitation