Trials@uspto.gov
`571-272-7822
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`Paper # 25
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` Entered: November 28, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`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.
`___________
`
`
`
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`
`
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`
`
`IPR2021-00920
`Patent 7,933,431 B2
`IPR2021-00922
`Patent 8,553,079 B2
`__________
`
`Record of Oral Hearing
`Held: September 13, 2022
`_____________
`
`
`
`
`Before, KEVIN F. TURNER, JONI Y. CHANG, and
`BRENT M. DOUGAL, Administrative Patent Judges.
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`

`

`IPR 2021-00920 2021-00922
`Patent 7,933,431 B2 8,553,079 B2
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`
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`APPEARANCES:
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`
`ON BEHALF OF THE PETITIONER:
`
`
`PAUL HART, ESQUIRE
`Erise IP, P.A.
`7015 College Blvd.
`# 700
`Overland Park, KS 66211
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`TODD LANDIS, ESQUIRE
`Williams Simons & Landis, PLLC
`The Littlefield Building
`601 Congress Avenue
`Suite 600
`Austin, TX 78701
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`
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday,
`September 13, 2022, commencing at 1:00 p.m., EDT, at the U.S. Patent and
`Trademark Office, by video, before Chris Hofer, Notary Public.
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`IPR 2021-00920 2021-00922
`Patent 7,933,431 B2 8,553,079 B2
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`P R O C E E D I N G S
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`JUDGE DOUGAL: Thank you, and welcome to this morning or
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`afternoon depending on where you’re located, for our hearing today. So this
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`is the oral hearing for IPR 2021-00920 which will be followed directly after
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`by the hearing for IPR 2021-00922 [To clarify the record, Petitioner
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`reversed the order in their argument and we proceeded in that manner. Thus,
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`the first hearing dealt with IPR 2021-00922 and the second hearing dealt
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`with IPR 2021-00920]. Also so the parties are aware to help decrease the
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`need to repeat issues, there are some overlap or at least there are some
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`similarities, we are going to be putting the transcript of both hearings in both
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`case files. So I know you have your slides separately but if there are issues
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`that we can address in essentially one hearing for both cases, the transcript
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`will be available in both cases so that shouldn’t be an issue or problem.
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`So, at the outset a few items of business. First of all, I’m Judge
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`Dougal. I have with me Judges Joni Chang and Kevin Turner. We thank
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`you all for being here today. As you know with these virtual hearings our
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`primary goal is your right to be heard so if at any time during the proceeding
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`if you encounter technical or other difficulties that you feel undermines your
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`ability to adequately represent your client please let us know immediately,
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`please reach out to us such as by contacting the team member who provided
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`you with the contact information for today’s hearing.
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`Second of all, when you’re not speaking please mute yourself. Please
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`identify yourself each time that you speak and this will help the court
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`reporter to accurately prepare a transcript and then fourth, as you know we
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`IPR 2021-00920 2021-00922
`Patent 7,933,431 B2 8,553,079 B2
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`have the entire record including your demonstratives. We can refer to them
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`on our own screen or if you would like to share your demonstratives that is
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`also acceptable. When you are referring to a document in the record please
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`identify clearly what that document is, for example, the demonstratives
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`papers or exhibits. Also, it is very helpful if you pause for a moment, let us
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`find your document where you’re at and especially if you’re going to refer to
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`a paper in the record or exhibit and then we can better follow along with
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`your arguments.
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`Finally, please be aware that there is a public line and there may be
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`members of the public who are listening in to our hearing today. So with
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`that, we will start off with Petitioner. You will let us know how who’s on
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`the line, who’s on the call today and who will be presenting.
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`MR. HART: Yes. Thank you, Your Honor. My name’s Paul Hart. I
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`will be presenting for Petitioner today. Also on the line is Adam Seitz, lead
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`counsel for Petitioner Apple.
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`JUDGE DOUGAL: Great. Thank you. And I believe we have 60
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`minutes of argument time. Would you like to reserve any of that for
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`rebuttal?
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`MR. HART: Yes, Your Honor. I’ll reserve 20 minutes for rebuttal.
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`JUDGE DOUGAL: Okay. Thank you. And who do we have
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`presenting today for Patent Owner?
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`MR. LANDIS: Good morning, Your Honor. This is Todd Landis.
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`Along with me is John Wittenzellner on behalf of Patent Owner. I will be
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`doing the presentations today and I’ll reserve whatever time I have left after
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`my argument, the initial argument, for rebuttal if I have any left.
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`IPR 2021-00920 2021-00922
`Patent 7,933,431 B2 8,553,079 B2
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`JUDGE DOUGAL: Okay. Thank you. Okay. Before we proceed to
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`arguments, are there any questions? Petitioner?
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`MR. HART: No, Your Honor.
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`JUDGE DOUGAL: Patent Owner?
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`MR. LANDIS: No, Your Honor.
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`JUDGE DOUGAL: Actually before we start, Patent Owner, similar
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`to our hearing we had a few weeks ago would you mind giving us an update
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`on anything that is going on with the District Court cases that relate to or I
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`should say the District Court, Eastern District of Virginia in particular
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`dealing with these cases.
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`MR. LANDIS: Yes, Your Honor. So all the briefing is complete. As
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`I updated the panel last time the Court had set a hearing off calendar and
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`notified the parties that the Court would decide the issue on the papers so we
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`are awaiting that ruling which has not occurred yet.
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`JUDGE DOUGAL: Okay. Thank you. All right. With that,
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`Petitioner, Mr. Hart, please proceed.
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`MR. HART: Thanks very much, Your Honor. The ‘079 patent is
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`generally directed to controlling a computing device using hand gestures.
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`DX-2 in Petitioner’s demonstratives provides an overview of those grounds
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`in this proceeding, all of which rely on Numazaki, a reference that provides
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`extensive detail of gesture-based device control that is remarkably similar to
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`the ‘079 patent. Given these similarities, the remaining disputes do not turn
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`on broad distinctions between the prior art and the challenged claims here
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`but instead involves minor quibbles about specific details in Numazaki’s
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`disclosure.
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`IPR 2021-00920 2021-00922
`Patent 7,933,431 B2 8,553,079 B2
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`Turning to DX-3 I provide a short overview of the remaining disputes
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`between the parties. Regarding the independent claims --
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`JUDGE DOUGAL: Counsel, sorry just for the sake of the record I’m
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`going to say the DX refers to in your demonstratives; correct? Your slide
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`number?
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`MR. HART: Yes, Your Honor. There is a footnote on each page of
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`Petitioner’s demonstratives DX-1 through DX-20 and I will be referring to
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`those footnotes to indicate which slide I’m discussing today.
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`JUDGE DOUGAL: Thank you.
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`MR. HART: Thank you. On DX-3 a summary of the remaining
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`disputes. First, regarding the independent claims the primary dispute
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`concerns Numazaki’s 8th embodiment. Petitioner has established on its
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`papers that Numazaki’s 8th embodiment laptop uses the imaging structure
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`from Numazaki’s figure 2. Patent Owner disputes this but entirely ignores
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`key evidence in support of Petitioner’s case.
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`Patent Owner next argues that even if the 8th embodiment does
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`include the figure 2 structure, it fails to satisfy the claims because
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`Numazaki’s figure 2 uses two cameras instead of one. The Board correctly
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`rejected this argument at Institution and Patent Owner provides no reason to
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`depart from that preliminary finding here.
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`The next two disputes between the parties concern dependent claims.
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`First dependent claim 7 requires a target mounted on the user to detect the
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`user’s hand-based gestures. Numazaki explains that it was well known in
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`the prior art to use targets such as colored rings to improve gesture detection
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`but it acknowledges that targets had downsides such as inconvenience or
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`IPR 2021-00920 2021-00922
`Patent 7,933,431 B2 8,553,079 B2
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`durability issues. Petitioner’s expert assessed the trade-off identified by
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`Numazaki and concluded that some users would be willing to accept the
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`inconvenience of wearing a ring in exchange for improved accuracy.
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`Patent Owner and its expert have refused to assess that trade-off in
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`this proceeding. They insist that because Numazaki acknowledged
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`downsides with targets that ends the matter and obviousness is defeated.
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`Patent Owner is wrong on the law in its refusal to accept the trade-off
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`identified by Numazaki provides the Board no basis on which to side with
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`Patent Owner on dependent claim 7.
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`Finally, dependent claim 3 requires a lighting unit with a plurality of
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`LEDs. Now our prior art, another Numazaki reference, Numazaki 863
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`teaches an LED array where the LEDs are sequentially illuminated in order
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`to improve the accuracy of gesture detection. To exclude our prior art,
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`which sequentially illuminates its LEDs, Patent Owner asks the Board to
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`import into claim 3 a requirement that all LEDs are illuminated
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`simultaneously. Now there’s no support for this construction. The patent
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`says nothing about simultaneous versus sequentially illuminating those
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`LEDs. Accordingly the claims must be construed to capture both.
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`The final point on DX-3 relates to the PTAB’s jurisdiction to review
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`its prior patents. Patent Owner did not address this in its surreply. I
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`understand that is the issue being addressed in the Eastern District of
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`Virginia litigation so I will address that in my final slide on rebuttal only if
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`necessary.
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`Turning to DX-4. This is the disputed claim language on which the
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`parties’ independent claim dispute centered. Claim 1(b) requires using a
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`IPR 2021-00920 2021-00922
`Patent 7,933,431 B2 8,553,079 B2
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`camera to determine a gesture that is illuminated by a light source.
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`If we turn to DX-5 we see that Numazaki’s 8th embodiment teaches
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`precisely that which is claimed. It describes a laptop as depicted in figure 74
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`that includes a light source 701 and a photodetection sensor unit 702. The
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`user’s hand is illuminated by the light source allowing the user to control
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`applications through hand gestures which are captured by the photo
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`detection sensor unit 702. Now, Patent Owner in this proceeding does not
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`dispute that general operation of Numazaki’s 8th embodiment. Instead it
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`insists that we have insufficient detail on the record about how exactly
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`Numazaki’s 8th embodiment works.
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`As we’ll see in the next few slides, Patent Owner is wrong about this.
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`We have an extensive record establishing that Numazaki’s 8th embodiment
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`uses the imaging structure from figure 2 in Numazaki.
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`Turning to DX-6. The first support for this conclusion, Numazaki
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`teaches that its 8th embodiment incorporates the input information
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`generation apparatus as described in earlier embodiments and as we see in
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`the quote from column 11, lines 9 through 11 from Numazaki, figure 2 is the
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`information input generation apparatus of the first embodiment. Now,
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`Patent Owner admits in its papers that figure 2’s structure is repeatedly
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`referenced throughout Numazaki’s many embodiments. It is a foundational
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`component in the reference that we see referenced over and over throughout
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`Numazaki’s many embodiments.
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`Turning to DX-7. We see some commonalities between Numazaki’s
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`8th embodiment in figure 2 that support the conclusion that figure 2 is what
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`Numazaki intended to be implemented in its 8th embodiment portable
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`IPR 2021-00920 2021-00922
`Patent 7,933,431 B2 8,553,079 B2
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`devices. Both figure 74 from the 8th embodiment in figure 2 include
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`lighting units. The lighting unit in figure 2 is designated 101 and the
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`lighting unit in figure 74 701. So common digits to connect those units.
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`They both include imaging units. Unit 1 of 2 in figure 2 and 702 in figure
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`74, so there’s commonalities between the images used for Numazaki’s 8th
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`embodiment in its figure 2 imaging structure.
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`Turning to DX-8, we see what I consider to be the most concrete tie in
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`Numazaki that connects its 8th embodiment to the figure 2 imaging
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`functionality. In this excerpt in DX-8 Numazaki teaches that its 8th
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`embodiment includes a photodetection section that captures a first image
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`when the lighting image is on and a second image when the lighting unit is
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`off. It then takes the difference between these images to produce an image
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`that solely reflects the illuminated object, so the user’s illuminated hand
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`removing all of the background information that was captured when the light
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`unit was on. This improves fidelity and improves the accuracy of gesture
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`detection. This excerpt concludes by noting that this functionality is as
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`already described in detail above.
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`Now, as the petition lays out and as Dr. Bederson explains in detail,
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`this differencing process described in this 8th embodiment excerpt is figure
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`2. I have reproduced figure 2 in DX-9 and as we see in figure 2 on DX-9
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`this dual camera differencing process is exactly what figure 2 does. That is
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`the whole purpose of figure 2. The first photo detection unit 109 in figure 2
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`takes an image when the light is on. The second photo detection unit 110
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`takes an image when it’s off and difference calculation unit 111 takes the
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`difference between those two images to produce an image that solely reflects
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`IPR 2021-00920 2021-00922
`Patent 7,933,431 B2 8,553,079 B2
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`the illuminated gesture, the user’s hand as reflected by that light source.
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`Critically, neither Patent Owner nor its expert have addressed this
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`fact, that Numazaki expressly teaches this functionality as part of its 8th
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`embodiment. This is the most concrete discussion in Numazaki itself that
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`connects figure 2 in the 8th embodiment and they have repeatedly ignored it
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`in the papers in this proceeding.
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`So what is Patent Owner’s argument on the 8th embodiment? Well, if
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`we turn to DX-10 we see that Patent Owner’s primary argument centers on
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`terminology. They point out that Numazaki in its 8th embodiment
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`introduces a new phrase, photo detection sensor unit. Because that phrase
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`was not used to describe figure 2, Patent Owner argues that they cannot be
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`the same and that the Board should conclude figure 2 is not part of the 8th
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`embodiment.
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`Now, it is certainly true that Numazaki introduced that new phrase for
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`its 8th embodiment specifically for unit 702 but that phrase photo detection
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`sensor unit is entirely consistent with and descriptive of figure 2. Patent
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`Owner does not dispute that unit 102 from figure 2 includes two photo
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`detection units. It also does not dispute that each of those is a sensor. So
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`referring to the structure in figure 2 as a photo detection sensor unit is
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`entirely consistent and descriptive.
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`Now there are two important points to make regarding Patent Owner’s
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`terminology argument here. The first, neither Patent Owner nor its expert
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`suggests what the photo detection sensor unit 702 might be, if not unit 102
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`from figures. So the only evidence in the record on this point comes from
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`Petitioner and Petitioner’s expert Dr. Bederson.
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`IPR 2021-00920 2021-00922
`Patent 7,933,431 B2 8,553,079 B2
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`The second point, just to reiterate as I’ve mentioned before, neither
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`Patent Owner nor its expert addresses Numazaki’s express teaching that its
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`8th embodiment includes the differencing process implemented by figure 2.
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`That is critical. It is, as I said, the most concrete discussion in Numazaki
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`that connects figure 2 to the 8th embodiment and Patent Owner has entirely
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`ignored it in this proceeding.
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`DX-11 through DX-13 address a related dispute concerning the
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`independent claims here. Patent Owner argues that even if we assume the
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`8th embodiment does include the figure 2 structure, that that structure falls
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`outside the claims. This relates to the multiple sensors timing unit in
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`differencing process of figure 2. In DX-11 I’ve pasted that same claim
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`language, claim 1(b) from the independent claim here. Again, it recites a
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`camera that observes a gesture performing the work volume and determines
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`using the camera, that gesture illuminated by the light source.
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`Patent Owner argues that because figure 2 creates a difference image
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`it falls outside the claims. In other words, Patent Owner insists that the
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`output of one and only one imaging sensor must be directly used to
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`determine the gesture with no intermediate or intervening process. Patent
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`Owner is wrong. We saw this same argument in the preliminary response
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`and the Board correctly rejected this narrow view of the claims at Institution.
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`In DX-12 I have the Board’s analysis from the Institution decision at
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`pages 12 through 13 where the Board correctly held that the claims are open
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`ended and do not exclude processing such as that described by Numazaki.
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`On the papers Patent Owner provides the Board no reason to deviate from
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`this preliminary (indiscernible).
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`IPR 2021-00920 2021-00922
`Patent 7,933,431 B2 8,553,079 B2
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`In sum, DX-13, again, I have the language. The language is
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`straightforward. It is using a camera to determine the gesture. Numazaki’s
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`system uses a first camera to capture the gesture while illuminated. Uses a
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`second camera to capture background information. Subtracts one from the
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`other to improve fidelity and then uses the result to determine a gesture. It is
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`irrelevant to the challenged claims that second camera’s image is subtracted
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`from the first. Both cameras, including the first camera, still use to
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`determine the gesture and that is all that’s required of the challenged claims.
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`DX-14 through DX-16 address the next substantive dispute which
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`relates to dependent claim 7’s requirement for a target positioned on a user.
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`So this is something else other than the user itself that is used to detect user-
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`based gestures. In DX-14 summarizing the theory that was presented in the
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`petition, Numazaki explains that it was well known to use targets such as
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`colored rings to improve gesture detection. But Numazaki did acknowledge
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`--
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`JUDGE DOUGAL: Mr. Hart?
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`MR. HART: Yes, go ahead.
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`JUDGE DOUGAL: This is Judge Dougal. I want to go back to the
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`previous slide, DX-13. So I read Patent Owner’s argument on this issue to
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`be about this question of whether the analysis is based off of the same image
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`that comes from one of the photo detection units 109 or 110 and I guess I’d
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`like some clarification on your position as far as the camera means goes, and
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`is it your position that Numazaki can be read to the camera is either 109, 110
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`or the entire reflected extraction unit 102 can also be considered the camera.
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`Is it your position that the image that you’re saying that Numazaki makes
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`IPR 2021-00920 2021-00922
`Patent 7,933,431 B2 8,553,079 B2
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`analysis on is the image from first detection unit 109 or is it the image that
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`comes from the reflected unit, extraction unit, the final image that has the
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`background things subtracted from it? You know, what -- is it your position
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`that either of these satisfy them, only one satisfies them, you know, I’d just
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`like a little more clarification on your position in that regard?
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`MR. HART: Absolutely, Your Honor. Yes, it was our position in the
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`petition that unit 102 with both sensors and the full process that it
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`implements to improve the fidelity satisfies the claimed camera. Now, it is a
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`camera it includes in its image sensors. It does take images of the object
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`while it’s gesturing. That gesture is illuminated by a light source when unit
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`102 does capture those images and processes them to determine the gesture.
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`But as the proceeding has progressed and these issues about the multiple
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`sensors in unit 102 have been raised by Patent Owner, it’s clear that in fact
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`all of the above satisfy the claim.
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`Unit 109, the sensor that captures an image while the image is
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`illuminated also satisfies the claim. It is used, it is a camera that is used to
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`determine the gesture performed in the work volume and illuminated by the
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`light source. Again, 109 is the image sensor that takes a picture while the
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`light’s on and so that is used in the process of determining the gesture.
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`In fact, sensor 110 also satisfies this claim language. It is also a
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`camera. It is an image sensor and although it captures images when the light
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`is off, it is used in the overall process to determine the gesture that was
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`performed in the work volume when the gesture was illuminated by the light
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`source. So it is part of the process of capturing images of a gesture
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`performed in a work volume illuminated by a light source. All of the above,
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`IPR 2021-00920 2021-00922
`Patent 7,933,431 B2 8,553,079 B2
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`before unit 102 with those sensors and its differencing process as well as
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`individually sensor 109 and sensors 110 all satisfy the claimed camera,
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`determining using the camera, the gesture performed in a work volume and
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`illuminated by the light source.
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`Thank you for the question, Your Honor. I will turn back to DX-14 to
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`the issue that I had started running into before the question. Again, this is
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`related to claim 7, dependent claim 7’s requirement for target position on the
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`user. As I explained, Numazaki teaches that it was known in the prior art to
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`use such targets such as a color ring to improve detection. It also
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`acknowledged that there are downsides with such targets, inconvenience,
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`durability issues. Dr. Bederson, Petitioner’s expert, explained that many
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`users would accept the trade-off identified by Numazaki and would accept
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`the inconvenience of wearing a ring for improved detection, improved
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`accuracy in the gesture detection of the system camera 4. The rationale is
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`that many users wear rings on a daily basis with no ill effect and so for
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`specifically the ring embodiment identified by Numazaki there really isn’t
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`much of a downside in that on balance improved detection outweighs the
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`inconvenience of wearing a ring for many users.
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`Now turning to DX-15, the Federal Circuit has explained for example
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`in Winner Intern. Royalty Corp. v. Wang, that where a proposed course of
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`action has expressed benefits and detriments, those must be weighed against
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`one another in assessing obviousness. This has been repeatedly stressed by
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`the Federal Circuit since Winner including in Medichem, S.A. v. Rolabo,
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`S.A. in 2006 and Allied Erecting and Dismantling Co v. Genesis
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`Attachments in 2016 that we see on DX-15. In Allied Erecting the Federal
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`IPR 2021-00920 2021-00922
`Patent 7,933,431 B2 8,553,079 B2
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`Circuit noted a given course of action often has simultaneous advantages and
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`disadvantages. This does not necessarily obviate motivation to combine.
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`We turn to DX-16.
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`JUDGE DOUGAL: Counsel?
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`MR. HART: Yes, Your Honor.
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`JUDGE DOUGAL: Sorry to pause you here. So jumping into claim
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`7 for the target, if I’m not mistaken I believe that’s actually the ‘922 case,
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`not the ‘920; right? We started off with the ‘920 discussion? I’m a little
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`confused.
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`MR. HART: Sorry, Your Honor. I have been focusing on the ‘079
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`patent, the 922 case. That might have been inserted into our docketing
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`system incorrectly and if so, my sincere apologies. We didn’t catch it until
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`now because as you noted earlier the issues are so common. What is your
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`preference on the most efficient way to proceed given what appears to be my
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`embarrassing mistake here? I’m happy to proceed on the ‘079, the 922, or I
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`can switch over and try to kind of synthesize what was common between the
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`two and pick it up where we left off on the ‘431 patent.
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`JUDGE DOUGAL: Mr. Landis, do you have a preference if it
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`continues on with the second case versus the first one?
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`MR. LANDIS: I’ve been following along on the second case so I’m
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`happy to just proceed as we’re going and I’ll be ready to argue that one first
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`and then other one after that.
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`JUDGE DOUGAL: Okay. So I’ll just make it clear on the record.
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`We’ll need to sort some things out on the transcript. This is actually the
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`beginning of case IPR 2021-00922 and then we’ll be dealing with the 920
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`IPR 2021-00920 2021-00922
`Patent 7,933,431 B2 8,553,079 B2
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`case after this proceeding. No problem at all, Mr. Hart.
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`MR. HART: Apologies again and thanks very much everybody for
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`accommodating this. So as Your Honor correctly points out, this is ‘079
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`dependent claim 7 target position on a user and the main issue here is the
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`trade-off. Numazaki recognizes benefits of using targets and also
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`acknowledges using downsides of using targets. Our expert, Dr. Bederson,
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`assessed that trade-off and concluded that many users would accept the
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`inconvenience of wearing a ring for the improved accuracy of gesture
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`detection.
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`And I was just talking about in DX-15 and DX-16, the Federal Circuit
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`is clear that where there is a trade-off, where there are identified benefits and
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`detriments, that those benefits and detriments must be weighed against one
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`another to assess obviousness. The Court has repeatedly affirmed that rule
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`of law over and over over the years.
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`In DX-16 we see in the Winner International case, that’s precisely
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`what happened. The Federal Circuit noted that the District Court found that
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`one of skill in the art would not have reasonably elected trading the benefit
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`of security for that of convenience. The Board there, I’m sorry, the Court
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`there ruled in favor of Patent Owner but it acknowledged that that trade-off
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`was an important part of the overall analysis. Faced with a trade-off, you
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`must consider both the benefits and the detriments, weigh them against one
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`another to assess obviousness. Here, Patent Owner has refused to assess that
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`trade-off. Its expert did not consider the benefit of targets and instead
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`focused solely on the downsides identified by Numazaki. Accordingly, the
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`sole analysis on this record that properly accounts for the trade-off identified
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`IPR 2021-00920 2021-00922
`Patent 7,933,431 B2 8,553,079 B2
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`by Numazaki is from Petitioner and its expert, Dr. Bederson.
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`DX-17 through DX-19 address the final substantive dispute between
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`the parties in 922 proceeding involving the ’079 patent. Dependent claim 3
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`recites the light source includes a plurality of LEDs. Now as we see on DX-
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`17 the petition proposed modifying Numazaki with another Numazaki
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`reference, Numazaki 863 which teaches an LED array for improved
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`accuracy. Numazaki 863 sequentially illuminates each one of those LEDs in
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`its array in order to obtain distance information of the gesturing hand which
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`improves the accuracy of gesture detection. Now that operation of
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`Numazaki 863 is not disputed in this proceeding. The question is simply
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`one of claim construction.
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`As we see in DX-18 Patent Owner’s argument as it laid out in its
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`response at page 7 asked the Board to construe claim 3 to require all LEDs
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`emit light simultaneously. Now Patent Owner cites a single sentence from
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`the ‘079 patent in support. That sentence that is on, at the bottom of DX-18
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`states,
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`“Light from below such as provided by single central light 122 can be
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`used to illuminate the finger that typically looks bright under such
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`illumination.”
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`That sentence is simply stating that light makes a gesturing finger
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`look bright. It says nothing about simultaneously emitting light from
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`multiple LEDs or sequentially emitting light from multiple LEDs. In fact, it
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`is expressly concerning a single central light 122.
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`From that basic teaching, that general teaching that we saw in DX-18
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`we turn to DX-19. From that general teaching Patent Owner argues that two
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`IPR 2021-00920 2021-00922
`Patent 7,933,431 B2 8,553,079 B2
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`LEDs are brighter than one, that brighter light increases accuracy and that
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`simultaneous illumination should be read into the claims to capture that
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`benefit. Now it’s black letter law that limitations are not read from the
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`specification into the claims. But even if that were legally proper, there’s
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`nothing to read in from the ‘079 patent. The patent has no discussion
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`whatsoever regarding illuminating simultaneously versus sequentially.
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`Accordingly, the claims must be construed broadly enough to capture both
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`approaches.
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`If there are no further questions from the Board, I will reserve the rest
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`of my time for rebuttal.
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`JUDGE DOUGAL: All right. Thank you, Mr. Hart. Mr. Landis, go
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`ahead.
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`MR. LANDIS: Good afternoon. Todd Landis for Patent Owner. I’m
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`going to start on my slide 8, Patent Owner’s slide 8, and I will also be
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`referring to some of Petitioner’s slides and I’ll try to do my best to refer to
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`them as DX and the number so the record is clear.
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`There’s a lot to unpackage from the arguments that we just heard. If
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`we look at Patent Owner’s slide 8 the first issue that I’d like to address is
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`this teaching or whether Numazaki teaches limitation 1(b) and this actually
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`follows with other limitations in the claims 11(b) and also in claim 21 has
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`similar limitations on the independent claims.
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`But the first thing that Petitioner says is that Numazaki discloses that
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`figure 2 is incorporated into embodiment 8 and they cite in their slides to, if
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`we look at DX-8 -- I’ll give Your Honors a moment to get there -- they cite
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`to a quote from Numazaki at column 53, lines 20 through 36. But that
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`IPR 2021-00920 2021-00922
`Patent 7,933,431 B2 8,553,079 B2
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`column is following a discussion of figure 79, the wristwatch embodiment,
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`not the 8th embodiment. It’s actually the 9th embodiment. It’s not the
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`embodiment they’re talking about. That paragraph doesn’t say it even
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`applies to that embodiment. It is in a discussion of figure 79 and so there is
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`no teaching in Numazaki that somehow the entirety of figure 2 is in th