UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`GESTURE TECHNOLOGY PARTNERS LLC
`Patent Owner
`___________
`
`
`
`Case No. IPR2021-00922
`U.S. Patent No. 8,553,079
`____________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`GESTURE TECHNOLOGY PARTNERS LLC
`Patent Owner
`___________
`
`
`
`Case No. IPR2021-00922
`U.S. Patent No. 8,553,079
`____________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`TABLE OF CONTENTS
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`
`INTRODUCTION ........................................................................................ 1
`I.
`II. ARGUMENT ................................................................................................ 3
`[1(B)]
`A. PATENT OWNER’S ARGUMENTS REGARDING
`LIMITATION
`MISCONSTRUE THE CLAIM LANGUAGE AND THE PROPOSED GROUND ................ 3
`1. Patent Owner ignores Numazaki’s express teaching that its eighth
`embodiment implements the image difference calculation taught by its
`first embodiment ........................................................................................ 7
`
`2. Patent Owner’s terminology argument conflicts with Numazaki’s
`substantive teachings ................................................................................. 7
`3. The claims should not be construed to exclude multi-camera systems ... 11
`4. Numazaki illuminates the gesture while the gesture is performed .......... 12
`B. PATENT OWNER AND ITS EXPERT FAIL TO ADDRESS THE TRADEOFF
`IMPLICATED BY THE PETITION’S CLAIM 7 MAPPING ....................................... 15
`C. PATENT OWNER’S GROUND 2 CRITIQUE IS WHOLLY UNSUPPORTED BY THE
`RECORD ......................................................................................................... 18
`D. THE BOARD HAS JURISDICTION TO REVIEW EXPIRED PATENTS ....................... 21
`III. CONCLUSION ........................................................................................... 22
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`I.
`
`INTRODUCTION
`The Challenged Claims focus on detecting gestures with a camera where the
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`U.S. Patent No. 8,533,079
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`gesture is illuminated by a light source. Among the Challenged Claims, certain
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`dependent claims further narrow the focus to detecting hand motions (e.g., Claims
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`5-6) form a user of a laptop computer (e.g., Claim 10). Fig. 2 below depicts an
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`exemplary structure in which multiple cameras (e.g., 100/101) capture images of a
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`user’s finger illuminated by light source 122:
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`
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`Ex. 1001, Fig. 2, 2:65-3:3 (describing the same).
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`The Petition is based primarily on Numazaki (Ex. 1004), which provides
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`extensive disclosure and numerous examples of an information input scheme that
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`captures images of an illuminated object and processes those images to detect
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`gestures. Ex. 1004, 10:8-13. Among its many embodiments, Numazaki teaches a
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`1
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`laptop computer example in which the “the operator operating the keyboard can
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`make the pointing or gesture input by slightly raising and moving the index finger.”
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`Id. at 50:38-40. This embodiment is depicted in Fig. 74 below:
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`
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`Id. at Figure 74 (annotated to indicate light source 701 and photo-detection sensor
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`unit 702). Like the ’079 Patent, Numazaki uses multiple cameras to detect gestures.
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`Using these cameras, it describes a process that removes image information
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`illuminated only by ambient light, resulting in a more precise image of the
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`illuminated gestures.
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`Patent Owner’s Response (“POR” or “Paper 13”) does not dispute that
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`Numazaki’s goals, applications, and implementations are nearly identical to that
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`described in the ’079 Patent. Given the substantial overlap, the POR attempts to
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`manufacture distinctions between the claim language and Numazaki’s disclosures—
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`2
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`most based on the more advanced two-camera process Numazaki describes. None
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`of these distinctions distinguish the prior art when the claims are properly construed.
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`First, Patent Owner advances numerous attacks on the specific camera
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`arrangement employed by Numazaki’s gesture detecting unit, all of which
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`mischaracterize Numazaki, misconstrue the claims, or both. Second, Patent Owner
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`advanced a legally flawed challenge to the Petition’s straightforward theory that a
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`POSITA1 would have been willing to accept the downsides of using visual targets
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`(e.g., rings) to improve accuracy in certain applications. Finally, Patent Owner
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`proposes an entirely unsupported claim construction position that would read into
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`certain claims a temporal limitation requiring multiple LED be illuminated
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`simultaneously.
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`II. ARGUMENT
`A.
`Patent Owner’s arguments regarding limitation [1(b)] misconstrue
`the claim language and the proposed ground
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`All Challenged Claims recite some variation of limitation [1(b)]: “providing
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`a camera oriented to observe a gesture performed in the work volume, the camera
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`being fixed relative to the light source; and determining, using the camera, the
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`gesture performed in the work volume and illuminated by the light source.”
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`1 The Petition used PHOSITA and Patent Owner has used POSITA. For consistency,
`Petitioner adopts POSITA in its Reply.
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`3
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`This is Numazaki’s entire focus. Its “invention is basically directed to an
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`information input scheme in which the light is irradiated onto a target object from a
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`light source, and the reflected light from this target object is captured as an image,
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`so that information on this target object such as its shape, motion, distance, etc., can
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`be obtained from this reflected light image.” Ex. 1004, 10:8-13; see also id. at 10:61-
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`66 (“When the target object is a hand, it becomes possible to obtain the information
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`regarding a gesture or a pointing according to the feature data extracted from the
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`reflected light image of the hand, for example, and it becomes possible to operate a
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`computer by using this obtained information.”).
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`For limitation [1(b)], the petition relies on the input generation apparatus
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`illustrated in Fig. 2 below, which includes reflected light extraction unit 102—a
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`fundamental feature of Numazaki’s invention used across many of its embodiments:
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`4
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`Ex. 1004, Fig. 2, 11:9-11 (noting Fig. 2 illustrates an “information input generation
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`apparatus”).2 As explained in the Petition at 6-8, a timing control unit is used to turn
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`lighting unit 101 on (i.e., illuminating the target object) when the first camera unit is
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`active and off when the second camera unit is active. Id. at 11:20-32. The result of
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`this light control is the first camera unit captures an image of the target object
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`illuminated by both natural light and the lighting unit 101 and the second camera
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`unit captures an image of the target object illuminated by only natural light. Id. at
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`11:33-39. The difference between the two images—obtained by difference
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`calculation unit 111—represents the “reflected light from the object resulting from
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`the light emitted by the lighting unit 101.” Id. at 11:43-51. In the context of a
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`gesturing hand, unit 102 produces an image that precisely captures only the portions
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`of the hand that are illuminated by lighting unit 101, excluding other image
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`information that is illuminated only by ambient light. Ex. 1017, ¶¶ 7-8 (explaining
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`that Numazaki’s two-sensor structure improves upon a single sensor structure by
`
`
`2 To the extent Patent Owner attempts to argue that Numazaki’s Fig. 2 structure does
`not include “cameras,” its own expert’s testimony conflicts with such a position. Mr.
`Occhiogrosso testified that a “camera” consists of a lens, electro-optical sensor, and
`storage (e.g., film or memory). Ex. 1018, 13:14-23. He conceded that photo-
`detection units 109 and 110 are electro-optical sensors. Id. at 15:18-16:3. He also
`conceded that the output of an electro-optical sensor must necessarily be stored (even
`if temporarily) to be processed. Id. at 28:12-29:14. And, as illustrated in Fig. 2, the
`structure uses a lens (photo-detection optics 107) to focus the light on sensors 109
`and 110. Ex. 1004, 11:9-19 (explaining that an image is formed by photo-detection
`optics 107).
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`5
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`ensuring that the produced image captures the illuminated gesture while excluding
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`extraneous image information). This information is then used by feature data
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`generation unit 103 to determine gestures, pointing, etc. of the target object that may
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`be converted into commands executed by a computer. Ex. 1004, 10:57-66.
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`As set forth in the Petition at 8-9, Numazaki incorporates the first
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`embodiment’s gesture detection unit into a laptop computer such that a user can
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`point or gesture while typing on the keyboard “with[] hardly any shift of the hand
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`position.” Id. at 50:25-43. This arrangement is illustrated in Fig. 74 below:
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`Id. at Fig. 74 (annotated to indicate light source 701 and photo-detection sensor unit
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`
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`702).
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`
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`6
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`Numazaki expressly teaches that its eighth embodiment incorporates “the
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`information input generation apparatus of the present invention as described in the
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`above embodiments.” Id. at 50:21-24. As explained in the Petition at 9, a POSITA
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`would have understood that the eighth embodiment uses the information input
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`generation apparatus illustrated in Fig. 2 at least because Numazaki at 53:22-36
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`expressly teaches that the eighth embodiment uses the precise image difference
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`calculation taught by Fig. 2 and its corresponding disclosure. Ex. 1010, ¶¶ 42-43.
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`1. Patent Owner ignores Numazaki’s express teaching that its eighth
`embodiment implements the image difference calculation taught by its
`first embodiment
`Patent Owner contends that Numazaki lacks a “camera” due to a number of
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`superficial arguments regarding the Petition’s conclusion that Numazaki’s eighth
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`embodiment implements the information input generation apparatus from its first
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`embodiment. Tellingly, neither Patent Owner nor its expert ever addresses the
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`critical fact that Numazaki expressly teaches its eighth embodiment implements the
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`same image difference calculation that is the focus of its first embodiment.
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`Accordingly, this key teaching on which the proposed grounds turn is undisputed.
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`2. Patent Owner’s terminology argument conflicts with Numazaki’s
`substantive teachings
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`Patent Owner argues that the “photo detection unit” is different from the
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`“photo detection sensor unit,” and that the latter is not a “camera” as claimed. Patent
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`Owner concedes that Numazaki’s eighth embodiment incorporates the information
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`7
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`input generation apparatus described in the preceding embodiments, but takes issue
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`with an alleged terminology discrepancy. Namely, noting that Numazaki’s first
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`embodiment uses the phrase “photo-detection unit” and its eighth embodiment uses
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`“photo-detection sensor unit,” Patent Owner argues that “the Petition does not
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`explain why a POSITA would understand the ‘photo-detection sensor unit’ in Fig.
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`74 to be a ‘photo-detection unit’ from Fig. 2.” Paper 13, 9-11.
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`As an initial matter, Patent Owner’s terminology argument mischaracterizes
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`the proposed ground. The Petition does not argue that Numazaki’s “photo-detection
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`sensor unit” is one of the photo-detection units from Fig. 2. Instead, the Petition
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`makes clear that the entire Fig. 2 structure is incorporated into the eighth
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`embodiment, including the reflected light extraction unit 102’s two separate photo-
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`detection units 109 and 110. Paper 1, 6-9, 13-14.
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`Second, contrary to Patent Owner’s suggestion, Numazaki’s terminology is
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`both internally consistent and supports Petitioner’s proposed grounds. It uses the
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`term “photo-detection sensor unit” to describe component 102, which includes two
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`photo-detection sensors. In other words, a photo-detection unit with photo-detection
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`sensors is referred to as a “photo-detection sensor unit.” As illustrated below, the
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`first embodiment’s information input generation apparatus includes lighting unit 101
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`(green) and reflected light extraction unit 102 (orange):
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`
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`8
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`Ex. 1004, Fig. 2 (annotated). Numazaki’s eighth embodiment utilizes lighting unit
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`701 (green) and a photo-detection sensor unit 702 (orange):
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`
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`
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`Id. at Fig. 74 (annotated). As Dr. Bederson explained in support of the Petition,
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`“Numazaki’s eighth embodiment portable devices incorporate the controlled
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`lighting and two-camera sensor structure described with respect to the first
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`embodiment.” Ex. 1010, ¶¶ 42-43 (discussing the individual components of reflected
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`
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`9
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`light extraction unit 102, including both photo-detection units). Accordingly,
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`Numazaki’s “photo-detection sensor unit” 702 includes both photo-detection units
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`109 and 110.
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`There is no dispute that Numazaki’s photo-detection units 109 and 110 are
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`sensors. Patent Owner’s expert conceded this point on cross examination:
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`Q. [Do] [y]ou agree that Numazaki's unit 102 includes two separate
`electro-optical sensors?
`A. Yes, Numazaki's unit 102 includes two auto-detecting units which
`are regarded as electro-optical sensors.
`Occhiogrosso Trans. (Ex. 1018), 19:16-20. Petitioner’s expert, Dr. Bederson,
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`agrees. Ex. 1017, ¶ 3 (agreeing that both photo-detection units 109 and 110 are
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`electro-optical sensors).
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`Dr. Bederson further explains that a POSITA would have understood
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`Numazaki’s terminology (1) is internally consistent and (2) supports a conclusion
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`that the eighth embodiment’s “photo-detection sensor unit” 702 comprises reflected
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`light extraction unit 102, including two electro-optical sensors. Id. at ¶¶ 3-6
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`(explaining that “photo-detection sensor unit” accurately describes Fig. 2’s photo
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`detection unit that includes photo-detecting sensors).
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`Numazaki thus teaches photo-detection units (including sensors) for capturing
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`images. As a result, Numazaki teaches a “camera” as claimed.
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`10
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`3. The claims should not be construed to exclude multi-camera systems
`The POR next raises an argument that the Board soundly rejected at
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`institution—that “a camera” in limitation [1(b)] should mean “only one camera.” At
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`institution, the Board addressed this argument raised in Patent Owner’s Preliminary
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`Response and concluded that the claims should not be limited to a single camera:
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`Patent Owner argues that “Numazaki does not teach or suggest one
`camera oriented to observe a gesture performed in the work volume”
`(Prelim. Resp. 6 (emphasis added)), but then immediately thereafter
`explains why this understanding of the claim (that only one camera is
`required) appears to be incorrect (id. (discussing the meaning of
`“comprising” when used in claims)). Patent Owner concludes that
`claim 1 “uses the [open-ended] transitional phrase ‘comprising,’ so the
`term ‘a camera’ means one or more cameras.” Id.
`Based on the current record, we agree with Patent Owner that the claim
`is not limited to only a single camera. Rather, “a camera” means one or
`more cameras. Thus, we determine that one or both of Numazaki’s
`cameras read on the claimed “providing a camera” as outlined in the
`Petition. See Pet. 13–14.
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`Paper 10, 10. The POR does not introduce new evidence or argument in support of
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`narrowly limiting the claims to “only one camera.” In fact, it does not even advocate
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`that such a construction would be proper, thereby waiving it. Google LLC v. Uniloc
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`2017 LLC, IPR2020-00447, Paper 24 at 9-10 n. 6 (May 11, 2021) (finding waiver
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`where Patent Owner did not renew its pre-institution argument in the POR). Instead,
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`
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`11
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`it proffers that Numazaki fails to teach or suggest the claimed invention “if ‘a
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`camera’ in claim element [1(b)] is interpreted to mean ‘only one camera[.]’” Paper
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`13, 12 (emphasis added). It is unclear why such a construction might be applied here
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`when Patent Owner does not even advocate for it. Petitioner has not proposed such
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`a narrow read of the claims, and the Board has already rejected it. Accordingly, the
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`Board should make its preliminary ruling on this point final, ruling that “a camera”
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`means one or more cameras and that Numazaki’s cameras read on the claimed
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`“providing a camera.”
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`4. Numazaki illuminates the gesture while the gesture is performed
`Patent Owner’s final argument regarding limitation [1(b)] is difficult to track.
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`It first argues that, if “a camera” is not limited to “only one camera,” it must mean
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`“multiple cameras.” Paper 13, 12. Then, it argues that limitation [1(b)] mandates the
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`“gesture be illuminated by the light source when any of the cameras is capturing an
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`image of the gesture.” Id. Finally, it concludes that Numazaki cannot satisfy this
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`strained reading of the claims because one of its cameras captures images of the
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`gesture without illumination. Id. Patent Owner’s argument fails for a number of
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`reasons.
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`First, Patent Owner presents a false choice on claim construction. “A camera”
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`need not mean “only one camera” or “multiple cameras.” Instead, as the Board
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`concluded at institution, it should be construed to mean “one or more cameras.”
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`12
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`Accordingly, the claims do not outright exclude systems/methods that include
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`multiple cameras, nor do they require every camera in a system/method satisfy every
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`limitation. Properly construed, the claims are satisfied if a single camera in a multi-
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`camera system/method satisfies the limitations. Patent Owner does not dispute that
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`one of Numazaki’s cameras images the gesture when the lighting unit is illuminated.
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`Nor could it. Patent Owner’s expert, Mr. Occhiogrosso, expressly recognizes that
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`Numazaki’s “first photo-detection unit 109 is active when lighting unit 101 emits
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`light.” Ex. 2002, ¶ 53; see also Paper 1, 13-14 (explaining how the output of unit
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`109 is used to determine gestures). Accordingly, when properly construed,
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`Numazaki’s photo-detection unit 109 satisfies the claimed “a camera.”
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`Second, Patent Owner has failed to support (or even adequately explain) its
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`position that the claims require illuminating the gesture “when any of the cameras is
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`capturing an image of the gesture.” At pp. 12-13, the POR does not explain why the
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`claims are so limited, referring only to a prior discussion. It would appear that Patent
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`Owner is referring to the short discussion on p. 11, which concludes limitation [1(b)]
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`requires “the gesture be illuminated by the light source while the camera is capturing
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`one or more images of the gesture.” Paper 13, 11 (citing Ex. 2002, ¶ 52). The cited
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`portion of Mr. Occhiogrosso’s declaration similarly notes that “the specification of
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`the ’079 Patent discloses that the gesture is performed while being illuminated by
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`the light source.” Ex. 2002, ¶ 52. He goes on to conclude that “[a] POSITA would
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`13
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`understand this disclosure to mean that the light source illuminates the gesture while
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`the gesture is performed.” Id. (emphasis in original). Petitioner does not dispute that
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`the ’079 Patent teaches and claims illuminating a gesture while it is performed. As
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`noted in the preceding paragraph, Numazaki teaches precisely this at least with
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`respect to photo-detection unit 109, which always images the gesture while
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`illuminated. But there is no support for Patent Owner’s attempt to exclude Numazaki
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`on the basis that Numazaki’s second camera (photo-detection unit 110) images the
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`gesture when not illuminated. None of the cited teachings of the ’079 Patent say
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`anything about ensuring that the light source is active any time any camera captures
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`an image. Instead, like Numazaki, these citations simply stress the benefit of
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`obtaining an illuminated image of the gesture. Numazaki’s two-camera structure is
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`specifically designed to do this. It ensures that the system captures an accurate image
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`of the illuminated gesture. As set forth above, camera 109 captures an image of the
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`target object illuminated by both natural light and the lighting unit 101 and the
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`second camera unit captures an image of the target object illuminated by only natural
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`light. Ex. 1004, 11:33-39. The difference between the two images represents the
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`“reflected light from the object resulting from the light emitted by the lighting unit
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`101.” Id. at 11:43-51. Numazaki’s two-sensor structure thus improves upon a single
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`sensor structure by ensuring that resulting image reflects only the illuminated
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`gesture, excluding extraneous image information. Ex. 1017, ¶¶ 7-8. This outcome is
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`14
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`precisely the goal of the ’079 Patent’s invention—recognizing gestures by obtaining
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`an illuminated image of the gesture. Patent Owner’s attempt to interpret the claims
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`in a way that excludes Numazaki’s more sophisticated manner of accomplishing this
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`goal is without support in the claims or specification and should be rejected.
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`B.
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`Patent Owner and its expert fail to address the tradeoff implicated
`by the Petition’s Claim 7 mapping
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`Claim 7 adds the concept of using a “target positioned on a user” to facilitate
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`gesture detection. In one example, the ’079 Patent explains that a “line target such
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`as 200 can be worn on a finger . . . allow[ing] the tip of the finger to be used to type
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`on the keyboard without feeling unusual[.]” Ex. 1001, 3:65-4:2. This arrangement is
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`depicted in Fig. 2 below:
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`15
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`Id. at Fig. 2.
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`As explained in the Petition, Numazaki expressly teaches that it was known
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`in the prior art to position a target on a user to improve target detection (e.g., wearing
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`a ring in a particular color). Paper 1, 23 (citing Ex. 1004, 3:4-11). The Petition
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`acknowledges
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`that Numazaki
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`identifies downsides of such
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`targets (e.g.,
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`inconvenience and low durability), but demonstrates that users would have been
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`willing to accept such downsides in exchange for the improved accuracy in certain
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`circumstances. Paper 1, 23-24 (analyzing the tradeoff implicated by targets). The
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`Petition cites Dr. Bederson’s explanation that many users would accept the
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`inconvenience of wearing a small ring while typing—the context within which
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`gesture detection is described in Numazaki’s Fig. 74 embodiment—in exchange for
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`improved accuracy, particularly because many adults routinely wear rings with no
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`ill effect. Id. (citing Ex. 1010, ¶ 49).
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`The POR and Mr. Occhiogrosso focus exclusively on the downsides of using
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`such targets. Paper 13, 13-16; Ex. 2002, ¶¶ 58-61. Neither Patent Owner nor Mr.
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`Occhiogrosso analyzes the tradeoff at the heart of the Petition’s theory. They do not
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`dispute that targets improve accuracy, and they do not even attempt to balance the
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`benefit of improved accuracy against the downsides of using such targets. By failing
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`to assess the tradeoff at the heart of Petitioner’s theory, Patent Owner’s conclusion
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`is legally flawed, omitting half the required analysis. Winner Intern. Royalty Corp.
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`v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating
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`benefit comes at the expense of another benefit . . . should not nullify its use as a
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`basis to modify the disclosure of one reference with the teachings of another. Instead,
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`the benefits, both lost and gained, should be weighed against one another.”)
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`(emphasis added).
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`“It’s not necessary to show that a combination is the best option, only that it
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`be a suitable option.” Intel Corp v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021)
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`(citation omitted); see also In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (a
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`proposed combination need not be the “preferred, or most desirable, combination”).
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`Thus, contrary to Patent Owner’s assertion that Numazaki acknowledging
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`downsides of targets would lead a POSITA down “an anti-target path[] that diverges
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`from the path in claim 7” (POR, 14-15), Numazaki’s remarks must be balanced
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`against the benefits of targets to determine whether a case of obviousness has been
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`shown. Allied Erecting and Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d
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`1373, 1381 (Fed. Cir. 2016) (“A given course of action often has simultaneous
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`advantages and disadvantages, and this does not necessarily obviate motivation to
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`combine.”) (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir.
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`2006), citing Winner at 1349 n.8)).
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`Here, Petitioner’s expert, Dr. Bederson, acknowledged the downsides of using
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`a target for gesture detection, balanced those with the benefits of improved accuracy,
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`and concluded that a user of Numazaki’s Fig. 74 keyboard embodiment would have
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`accepted this tradeoff. Because Patent Owner and its expert ignore the tradeoff
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`entirely, they have failed to rebut the showing of obviousness.
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`C.
`
`Patent Owner’s Ground 2 critique is wholly unsupported by the
`record
`
`Patent Owner notes that Claim 1 requires determining a gesture illuminated
`
`by a light source and that Claim 33 narrows the method to light sources that include
`
`a plurality of LEDs. Paper 13, 6-7. Patent Owner then argues “Claim 3, when read
`
`in light of the specification, means 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.”
`
`Id. at 7 (emphasis added). Despite suggesting that the specification requires this
`
`interpretation, neither Patent Owner nor its expert identify any support in the ’079
`
`Patent for the proposed timing requirement. Instead, they quote the ’079 Patent for
`
`the unremarkable proposition that a light source can make a gesturing finger look
`
`brighter. Paper 13, 7 (citing Ex. 1001, 3:1-3), Ex. 2002, ¶ 41 (citing the same). Patent
`
`Owner and its expert attempt to extend this general teaching, arguing that (1) two
`
`LEDs illuminated at the same time are brighter than one LED, (2) brighter light
`
`increases accuracy, and (3) a POSITA would understand simultaneous illumination
`
`should be read into the claims to capture this benefit. Id. For a number of reasons,
`
`
`3 The same limitation appears in Claims 15 and 23. Petitioner’s responses to Patent
`Owner’s arguments apply to all three claims.
`18
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`IPR2021-00922
`U.S. Patent No. 8,533,079
`the Board should reject this attempt to import this unclaimed and undisclosed timing
`
`requirement into the claims.
`
`First, even if the patent had described the benefit of illuminating multiple
`
`LEDs at the same time—it does not—it would be improper to import this concept
`
`into the claims. Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed.
`
`Cir. 2014) (noting “we do not read limitations from the embodiments in the
`
`specification into the claims” and “[w]e depart from the plain and ordinary meaning
`
`of claim terms based on the specification in only two instances: lexicography and
`
`disavowal.”). Here, there is no implicated lexicography or disavowal. Indeed, the
`
`patent itself is entirely silent about the benefit of using multiple LEDs. It does not
`
`teach or suggest why one might choose multiple LEDs over a single LED, and it
`
`does not address the benefits that may be derived by employing multiple LEDs. In
`
`fact, Patent Owner’s expert admitted that the ’079 Patent does not address the timing
`
`of multiple LEDs at all. Ex. 1018, 38:3-9. Patent Owner and its expert have simply
`
`manufactured an alleged benefit of illuminating multiple LEDs simultaneously and
`
`used this manufactured benefit to exclude all other ways in which multiple LEDs
`
`may be used in the claimed invention. The claims merely recite that “the light source
`
`includes a plurality of light emitting diodes.” They do not define how each of the
`
`LEDs is used relative to the others. Nor does the specification.
`
`
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`19
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`IPR2021-00922
`U.S. Patent No. 8,533,079
`Second, Patent Owner and its expert modified the key phrase in the only
`
`portion of the specification they cite in support. The ’079 Patent at 3:1-3 teaches that
`
`“[l]ight from below, such as provided by single central light 122 can be used to
`
`illuminate[.]” (emphasis added). Patent Owner and its expert replaced the underlined
`
`portion with “[the light source]” in support of their argument that this excerpt
`
`informs the meaning of Claim 3’s multiple LED embodiment. Paper 13, 7, Ex. 2002,
`
`¶ 41. Contrary to Patent Owner’s argument, this excerpt says nothing about multiple
`
`LEDs, but instead describes illumination from a single light.
`
`Third, even accepting for the sake of argument Patent Owner’s premise that
`
`deploying multiple LEDs improves gesture detection accuracy, Ground 2 teaches
`
`this benefit. Namely, Ground 3 relies on Numazaki ’863’s LED array, which enables
`
`gestures to be more accurately detected by illuminating LEDs at different times and
`
`extracting distance information from a user’s hand. Paper 1, 35-39. In fact, the ’079
`
`Patent teaches a similar arrangement in which “LED light sources 301 and 302 can
`
`be . . . turned on and off at different times such that the position of each point can be
`
`independently found allowing the pointing direction to be calculated from the LED
`
`point data gathered by the stereo pair of PSD based sensors.” Ex. 1001, 4:21-28.4 In
`
`
`4 This excerpt describes multiple LEDs mounted on the user’s finger, rather than
`used to illuminate the finger—the inverse of the claimed arrangement. The point
`holds, however, that the patent expressly teaches illuminating multiple LEDs at
`different times to improve accuracy.
`
`
`
`20
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`IPR2021-00922
`U.S. Patent No. 8,533,079
`sum, the prior art set forth in Ground 3 not only obtains the same benefit Patent
`
`Owner ascribes to Claim 3, but also does so in a manner that aligns with the ’079
`
`Patent’s teachings.
`
`Patent Owner’s critique of Ground 2 turns entirely on narrowly construing
`
`Claim 3 to require “multiple LEDs of the light source emit light at the same time.”
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`POR, 6-8 (proposing narrow claim construction), 20-22 (applying narrow claim
`
`construction as sole critique of Ground 2). For the reasons outlined above, the Board
`
`should reject this narrow construction of Claim 3, and with it, Patent Owner’s
`
`critique of Ground 2.
`
`D. The Board has jurisdiction to review expired patents
`
`In its Preliminary Response, Patent Owner argued that the PTAB lacks
`
`authority to review expired patents because expired patents cannot be amended.
`
`Paper 8, 21-22. At institution, the Board rejected this argument, pointing out that
`
`Patent Owner failed to support this argument and establishing that reviewing expired
`
`patents is well within the PTAB’s authority. Paper 10, 17-19. Patent Owner advances
`
`the same argument in its POR, but again fails to provide any authority supporting
`
`the proposition that the PTAB lacks authority to review expired patents. Patent
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`Owner reframes its argument to focus on noncontroversial fact that patents are public
`
`franchises, which Congress grants the PTO significant latitude to adjudicate. Paper
`
`13, 1-2. Patent Owner argues that the PTO’s authority ends when the public
`
`
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`21
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`IPR2021-00922
`U.S. Patent No. 8,533,079
`franchise ends—at the patent’s expiration. Id. Patent Owner does not cite any rules,
`
`statutes, or other legal authority, creating from whole cloth this novel limitation on
`
`the permitted scope of PTAB review.
`
`Patent Owner is wrong. As the board set forth in detail at institution, there is
`
`no such limit on the PTAB’s authority to review expired patents. Indeed, the Federal
`
`Circuit recently reviewed a Final Written Decision cancelling claims in an expired
`
`patent, ultimately reversing an issue of claim construction and remanding to the
`
`PTAB for further consideration of obviousness in light of the new claim
`
`construction. Sony Corp. v. Iancu, 924 F.3d 1235, 1239-41 (Fed. Cir. 2019). The
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`court also concluded that a case or controversy existed despite the patent’s expiration
`
`and the fact that the underlying litigation had settled, acknowledging the importance
`
`of the Board’s (and the Federal Circuit’s) review of expired patents given that even
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`expired patents can be asserted for past infringement. Id. at 1238 n.1 (“It is well-
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`established that o
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