Inter Partes Review
`U.S. Patent No. 8,533,079
`Oral Argument, September 13, 2022
`
`Apple Inc. v. Gesture Technology Partners LLC
`Case No. IPR2021-00922
`
`Petitioner’s Demonstrative Exhibits – Not Evidence
`
`Petitioner’s DX-1
`
`
`U.S. Patent No. 8,533,079
`Oral Argument, September 13, 2022
`
`Apple Inc. v. Gesture Technology Partners LLC
`Case No. IPR2021-00922
`
`Petitioner’s Demonstrative Exhibits – Not Evidence
`
`Petitioner’s DX-1
`
`
`
`Grounds
`Ground 1: Claims 1, 2, 4-14, 17, 19, 21-22, 24-28, 30
`} Numazaki (Ex. 1004) in view of the knowledge of a POSITA
`
`Ground 2: Claims 3, 15, 23
`} Numazaki in view of Numazaki ‘863 (Ex. 1005)
`
`Ground 3: Claims 16, 29
`} Numazaki in view of DeLuca (Ex. 1006)
`
`Ground 4: Claim 18
`} Numazaki in view of DeLeeuw (Ex. 1007)
`
`Ground 5: Claim 20
`} Numazaki in view of Maruno (Ex. 1008)
`
`Petition at 5 (identifying challenged claims)
`
`Petitioner’s DX-2
`
`
`
`Remaining Disputes
`
`1. Numazaki’s 8th Embodiment:
`} Numazaki’s 8th embodiment includes a camera used to observe a
`gesture illuminated by a light source.
`
`2. Claim 7—Target:
`} Numazaki renders obvious gesture recognition using a target.
`} Only Petitioner’s expert assessed tradeoffs.
`
`3. Claim 3—Plurality of LEDs:
`} Claim 3 does not require illuminating all LEDs simultaneously.
`
`4. The PTAB has jurisdiction to review expired
`patents.
`
`Petitioner’s DX-3
`
`
`
`Disputed Claim Language
`
`} [Claim 1(b)] 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.
`
`Petitioner’s DX-4
`
`
`
`Numazaki’s 8th Embodiment
`} “[T]he operator operating the keyboard
`can make the pointing or gesture
`input by slightly raising and moving the
`index finger. The user’s convenience is
`remarkably improved here because the
`keyboard input and the pointing or
`gesture input can be made without
`hardly any shift of the hand position.” Ex.
`1004, 50:38-43.
`
`} “[T]he entire hand of the operator
`is illuminated, as can be seen from a
`dashed line circle indicating a range of
`illumination.” Id. at 50:35-37
`
`Petitioner’s DX-5
`
`Petition, 8-14.
`
`
`
`Numazaki’s 8th embodiment incorporates earlier-
`described gesture detection
`
`Ex. 1004, 50:18-24; Petition, 9.
`
`} “FIG. 2 shows an exemplary detailed configuration of
`this information input generation apparatus of the
`first embodiment.” Ex. 1004, 11:9-11; Reply, 4-5.
`
`Petitioner’s DX-6
`
`
`
`Fig. 74’s “photo-detection sensor unit” 702 includes the
`“reflected light extraction unit” 102 from Fig. 2
`
`} Petition, 8-9; Reply; 8-10.
`} Bederson Dec. (Ex. 1010), ¶¶42-43; Bederson Supp. Dec. (Ex. 1017), ¶¶5-6.
`
`Petitioner’s DX-7
`
`
`
`8th embodiment includes functionality described with
`reference to Fig. 2
`} Uses image difference calculation “as already described in
`detail above”:
`
`} Ex. 1004, 53:22-36; see also Petition, 9; Ex. 1010, ¶¶42-43; Reply, 7.
`
`Petitioner’s DX-8
`
`
`
`Numazaki’s Fig. 2 Image Differencing Functionality
`
`Petitioner’s DX-9
`
`
`
`PO’s Terminology Argument Fails
`} PO argues that Fig. 74’s “photo detection sensor unit” 702
`does not include Fig. 2’s “reflected light extraction unit” 102.
`} POR, 9-11; Sur-Reply, 1-2 (“Never .
`.
`. does Numazaki describe
`component 102 as a ‘photo-detection sensor unit.’”).
`
`} PO does not deny that:
`} 1) Unit 102 includes two “photo detection units”
`} 2) Each “photo detection unit” is a “sensor”
`
`} PO does not suggest what “photo detection sensor unit” 702 might
`be, if not unit 102.
`
`} PO does not address that the 8th embodiment expressly includes the
`image differencing describes with reference to unit 102.
`
`Petitioner’s DX-10
`
`
`
`Challenged Claims do not exclude Numazaki’s
`differencing process
`} [Claim 1(b)]
`} 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.
`
`} PO contends:
`} “The output of photo-detection unit 109 is not used to determine a
`gesture. Rather, it is used in ‘difference calculation unit 111,’ along with
`other inputs, to create a new image. That new image is then further
`processed in the system of Numazaki. Accordingly, photo-detection unit
`109 is not the claimed ‘camera’ because its output is not used to
`determine the gesture illuminated by the light source.” Sur-Reply, 5.
`(citations removed, emphases added).
`
`Petitioner’s DX-11
`
`
`
`Challenged Claims do not exclude Numazaki’s
`differencing process (cont.)
`} [Claim 1(b)] 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.
`
`} The Board correctly interpreted the claim at institution:
`
`Institution Decision, 12-13.
`
`Petitioner’s DX-12
`
`
`
`Challenged Claims do not exclude Numazaki’s
`differencing process (cont.)
`} Claims require “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’s system:
`} Uses a camera to captures the gesture while illuminated
`} Uses a second camera to capture background info
`} Subtracts one image from the other to improve fidelity
`} Uses the result to determine a gesture
`
`} Irrelevant that Numazaki’s second camera’s image is subtracted from
`the first camera’s image
`} The first camera is still used to determine the gesture
`} And the second camera is also used to determine a gesture
`
`Petitioner’s DX-13
`
`
`
`Claim 7: Target Use Is a Tradeoff
`} 7. The method according to claim 1 further including providing
`a target positioned on a user that is viewable in the work
`volume.
`
`} Numazaki recognizes benefits and detriments of targets:
`} Improved detection possible by “paint[ing] the finger tips with a
`color that can be easily extracted from the background, or wear[ing]
`a ring in such a color” Ex. 1004, 3:4-11
`} Acknowledges that targets can be inconvenient and have known
`durability issues. Id. at 3:32-38
`
`} Dr. Bederson: many users would accept tradeoff of wearing
`ring for improved detection. Ex. 1010, ¶¶48-49.
`} Rationale: users who wear rings in their daily lives would not be
`inconvenienced by ring-type target.
`
`Petition, 23-24.
`
`Petitioner’s DX-14
`
`
`
`Tradeoffs Must be Assessed
`} “The fact that the motivating benefit comes at the
`expense of another benefit . . . should not nullify its use as
`a basis to modify the disclosure of one reference with the
`teachings of another. Instead, the benefits, both lost
`and gained, should be weighed against one
`another.” Winner Intern. Royalty Corp. v. Wang, 202 F.3d
`1340, 1349 n.8 (Fed. Cir. 2000)
`
`} “A given course of action often has simultaneous advantages
`and disadvantages, and this does not necessarily obviate
`motivation to combine.” Allied Erecting and Dismantling Co. v.
`Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016)
`(quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
`(Fed. Cir. 2006), citing Winner at 1349 n.8)).
`
`Reply, 16-17.
`
`Petitioner’s DX-15
`
`
`
`Patent Owner Refused to Assess Tradeoff
`} Neither PO nor its expert have assessed this tradeoff.
`} They do not dispute that targets provide improved detection
`} PO: Any discussion of downsides = teaching away
`
`} Faced with a tradeoff, determining whether there is a
`“teaching away” requires assessing that tradeoff:
`} “[T]he district court [found] that one of ordinary skill in the
`art would not have reasonably elected trading the benefit of
`security for that of convenience.” Winner Int'l Royalty Corp. v.
`Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000).
`
`POR, 13-16.
`
`Petitioner’s DX-16
`
`
`
`Claim 3: Plurality of LEDS
`} “The method according to claim 1 wherein the light
`source includes a plurality of light emitting diodes.”
`} Petition
`proposes modifying Numazaki with
`Numazaki ’863’s LED array for improved accuracy:
`
`Petition, 35-42.
`
`Petitioner’s DX-17
`
`
`
`Simultaneous Illumination Construction
`Should be Rejected
`} POR, 7:
`} “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.”
`
`} The sole intrinsic teaching cited by PO simply says
`that the purpose of light is to illuminate:
`} “Light from below, such as provided by single central light 122
`can be used to illuminate the finger that typically looks bright
`under such illumination.” POR, 7 (citing Ex. 1001, 3:1-3).
`
`Petitioner’s DX-18
`
`
`
`Simultaneous Illumination Construction
`Should be Rejected (cont.)
`} From the general teaching that light makes an object
`brighter, POR at 7 argues that:
`} 1) Two LEDs are brighter than one
`} 2) Brighter light increases accuracy
`} 3) Simultaneous illumination should be read into claims to
`capture this benefit
`
`} Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed.
`Cir. 2014) (“we do not read limitations from the embodiments
`in the specification into the claims”).
`} Nothing to read in—the ’079 Patent has no discussion whatsoever
`re illuminating with multiple LEDs vs. one
`} Claims say nothing about simultaneous vs. serial illumination and
`must be construed to capture both
`
`Petitioner’s DX-19
`
`
`
`The Board has Jurisdiction to Review Expired
`Patents
`} PO argues the PTO has no interest in reviewing
`patents once they expire. POR, 1-2.
`
`} The Federal Circuit has expressly recognized the
`importance of the Board’s review of expired patents
`given that they can be asserted for past damages.
`} Sony Corp. v. Iancu, 924 F.3d 1235 (Fed. Cir. 2019); Reply, 21-22
`(discussing the same).
`
`} Patent Owner did not address issue in Sur-Reply.
`
`Petitioner’s DX-20
`
`
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