Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: November 29, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.,
`Petitioner,
`v.
`GESTURE TECHNOLOGY PARTNERS, LLC,
`Patent Owner.
`
`IPR2021-00922
`Patent 8,553,079 B2
`
`
`
`
`
`
`
`
`
`Before JONI Y. CHANG, KRISTI L. R. SAWERT, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`DOUGAL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 10
`Entered: November 29, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.,
`Petitioner,
`v.
`GESTURE TECHNOLOGY PARTNERS, LLC,
`Patent Owner.
`
`IPR2021-00922
`Patent 8,553,079 B2
`
`
`
`
`
`
`
`
`
`Before JONI Y. CHANG, KRISTI L. R. SAWERT, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`DOUGAL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`IPR2021-00922
`Patent 8,553,079 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`Petitioner, Apple Inc., requests that we institute an inter partes review
`to challenge the patentability of claims 1–30 (the “challenged claims”) of
`U.S. Patent 8,553,079 B2 (Ex. 1001, “the ’079 patent”). Paper 1 (“Petition”
`or “Pet.”). Patent Owner, Gesture Technology Partners, LLC, argues that
`Petitioner’s request is deficient and should not be granted. Paper 8
`(“Preliminary Response” or “Prelim. Resp.”).
`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
`demonstration of a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim, we institute an inter partes review. 1
`B. Related Matters
`The parties identify these related matters: Gesture Technology
`Partners, LLC v. Huawei Device Co., Ltd., No. 2:21-cv-00040 (E.D. Tex.);
`Gesture Technology Partners, LLC v. Samsung Electronics Co., No. 2:21-
`cv-00041 (E.D. Tex.); Gesture Technology Partners, LLC v. Apple Inc., No.
`6:21-cv-00121 (W.D. Tex.); Gesture Technology Partners, LLC v. Lenovo
`Group Ltd., No. 6:21-cv-00122 (W.D. Tex.); and Gesture Technology
`Partners, LLC v. LG Electronics, Inc., No. 6:21-cv-00123 (W.D. Tex.). Pet.
`77; Paper 6, 1–2. Patent Owner identifies these related Board proceedings:
`IPR2021-00917; IPR2021-00920; and IPR2021-00923. Paper 6, 2.
`C. The ’079 Patent
`The ’079 patent relates to “[a] method for determining a gesture,”
`such as a hand or finger gesture, using a camera and a light source, where
`
`
`1 Our findings and conclusions at this stage are preliminary, and thus, no
`final determinations are made.
`
`2
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`IPR2021-00922
`Patent 8,553,079 B2
`the gesture serves as an input for a computer. Ex. 1001, Abstract, 1:54–57,
`1:64–2:2. Figure 2, reproduced below, depicts an embodiment in which a
`computer device (e.g., laptop) includes this method.
`
`
`As illustrated in Figure 2, a laptop (138) may include camera locations (100,
`101, 105, 106, 108, 109), a keyboard surface (102), a screen housing (107), a
`light (122), light emitting diodes (LEDs) (210, 211), and a work volume area
`(170) within which a user’s movements are detected. Id. at 2:39–53. The
`system can detect a user’s finger alone or the user may employ external
`objects such as a ring (208) to help detect and recognize gestures performed
`in the work volume area (170). Id. at 2:54–3:8. The ’079 patent describes
`detecting point, pinch, and grip gestures using this configuration. Id. at 2:54–
`61, 3:48–51.
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`IPR2021-00922
`Patent 8,553,079 B2
`D. Illustrative Claim
`Petitioner challenges claims 1–30 of the ’079 patent. Claims 1, 11,
`and 21 are independent. Claim 1 is illustrative:
`1. A computer implemented method comprising:
`providing a light source adapted to direct illumination
`through a work volume above the light source;
`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.
`Ex. 1001, 13:2–9.
`
`
`II. ANALYSIS
`
`A. Summary of Issues
`In the below analysis, we first address the grounds of unpatentability.
`We then address Patent Owner’s jurisdiction arguments.
`B. Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 5),
`supported by the declaration of Dr. Benjamin B. Bederson (Ex. 1010):
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1, 2, 4–14, 17, 19, 21, 22,
`Numazaki, 3 Knowledge of a
`103(a)2
`24–28, 30
`PHOSITA4
`3, 15, 23
`103(a)
`Numazaki, Numazaki ’8635
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the challenged patent was filed before March 16, 2013, we refer to
`the pre-AIA versions.
`3 U.S. Patent 6,144,366, issued Nov. 7, 2000 (“Numazaki”) (Ex. 1004).
`4 A person of ordinary skill in the art (“PHOSITA”).
`5 U.S. Patent 5,900,863, issued May 4, 1999 (“Numazaki ’863”) (Ex. 1005).
`
`4
`
`
`
`35 U.S.C. §
`103(a)
`103(a)
`103(a)
`
`Reference(s)/Basis
`Numazaki, DeLuca6
`Numazaki, DeLeeuw7
`Numazaki, Maruno8
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`IPR2021-00922
`Patent 8,553,079 B2
`Claim(s) Challenged
`16, 29
`18
`20
`
`
`1. Legal Standards for Unpatentability
`Petitioner bears the burden to demonstrate unpatentability. Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015). At this preliminary stage, we determine whether the information
`presented in the Petition shows a reasonable likelihood that Petitioner would
`prevail in establishing that at least one of the challenged claims would have
`been unpatentable. See 35 U.S.C. § 314(a).
`A claim is unpatentable as obvious under 35 U.S.C. § 103 if “the
`differences between the subject matter sought to be patented and the prior art
`are such that the subject matter as a whole would have been obvious at the
`time the invention was made to a person having ordinary skill in the art to
`which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`398, 406 (2007) (quoting 35 U.S.C. § 103(a)). We resolve the question of
`obviousness based on underlying factual determinations, including: (1) the
`scope and content of the prior art; (2) any differences between the prior art
`and the claims; (3) the level of skill in the art; and (4) when in evidence,
`objective indicia of nonobviousness. See Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966).
`We apply these principles to the Petition’s challenges.
`
`
`6 U.S. Patent 6,064,354, issued May 16, 2000 (“DeLuca”) (Ex. 1006).
`7 U.S. Patent 6,088,018, issued July 11, 2000 (“DeLeeuw”) (Ex. 1007).
`8 U.S. Patent 6,191,773 B1, issued Feb. 20, 2001 (“Maruno”) (Ex. 1008).
`
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`Patent 8,553,079 B2
`2. Level of Ordinary Skill in the Art
`Petitioner asserts that “[a] person having ordinary skill in the art
`(“PHOSITA”) at the time of the ’079 Patent would have had at least a
`bachelor’s degree in electrical engineering or equivalent with at least one
`year of experience in the field of human computer interaction” and that
`“[a]dditional education or experience might substitute for the above
`requirements.” Pet. 4 (citing Ex. 1010 ¶¶ 29–31). Patent Owner does not
`dispute Petitioner’s level of ordinary skill in the art. Prelim. Resp. 5.
`We are persuaded, on the present record, that Petitioner’s declarant’s
`statement is consistent with the problems and solutions in the ’079 patent
`and prior art of record. We adopt this definition for the purposes of this
`Decision.
`3. Claim Construction
`In inter partes review, we construe claims using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b), including construing the claims in
`accordance with the ordinary and customary meaning of such claims as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent. 37 C.F.R. § 42.100(b) (2020).
`Neither party proposes any claim constructions at this stage. Pet. 5–6;
`Prelim. Resp. 5. To the extent any term needs construction, we address the
`term in the arguments below. See Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only
`construe terms that are in controversy, and only to the extent necessary to
`resolve the controversy.”) (internal quotation omitted).
`
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`Patent 8,553,079 B2
`4. Obviousness over Numazaki and Knowledge of a PHOSITA
`Petitioner argues that Numazaki in view of the knowledge of a person
`of ordinary skill in the art (“PHOSITA”) would have rendered obvious
`claims 1, 2, 4–14, 17, 19, 21, 22, 24–28, and 30. Pet. 6–35. Patent Owner
`specifically contends that Numazaki does not disclose all the limitations of
`claims 1, 7, 11, 17, 21, and 27. Prelim. Resp. 5–24.
`We first give an overview of the asserted prior art, Numazaki. This is
`followed by a discussion of Petitioner’s positions and Patent Owner’s
`arguments in response where we conclude that Petitioner has demonstrated a
`reasonable likelihood of prevailing with respect to at least one claim.
`a) Numazaki
`Numazaki “relates to a method and an apparatus for generating
`information input in which input information is extracted by obtaining a
`reflected light image of a target object.” Ex. 1004, 1:8–11.
`Figure 1, reproduced below, depicts a block diagram for an
`information input generation apparatus.
`
`
`Figure 1 shows that an information input generation apparatus includes a
`lighting unit (101), a reflected light extraction unit (102), a feature data
`generation unit (103), and a timing signal generation unit (104). Id. at 10:23–
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`Patent 8,553,079 B2
`28. Numazaki describes emitting light from the light emitting unit (101) and
`that the intensity of the light varies in time according to a timing signal from
`the timing signal generation unit (104). Id. at 10:29–31. The light is directed
`onto a target object and light reflected from the target object is extracted by
`the reflected light extraction unit (102). Id. at 10:31–35. Numazaki teaches
`that the feature data generation unit (103) extracts feature data from the
`reflected light image. Id. at 10:57–61. Numazaki further teaches operating a
`computer based on information obtained from the feature data. Id. at 10:61–
`66.
`
`Figure 74, reproduced below, illustrates an information input
`generation apparatus.
`
`
`Figure 74 shows a portable computer with an information input
`generation device. Id. at 50:25–29. The device includes a lighting unit (701)
`and a photo-detection sensor unit (702). Id. at 50:29–35. Numazaki teaches
`that “the operator operating the keyboard can make the pointing or gesture
`input by slightly raising and moving the index finger.” Id. at 50:38–40.
`b) Claim 1
`Petitioner relies on Numazaki in view of the knowledge of a person of
`ordinary skill in the art (“PHOSITA”) for teaching or suggesting all of the
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`Patent 8,553,079 B2
`elements of claim 1. Pet. 10–14. For example, Petitioner relies on the
`portable computer with an information input generation device of Figure 74
`with its lighting unit (701) and photo-detection sensor unit (702) for the
`providing a computer, light source, and camera, method steps of claim 1. Id.
`at 10–13.
`Petitioner further argues that the determining step is taught by
`Numazaki, where the lighting and photo-detection sensor units are used to
`determine a hand gesture in the area above the laptop. Id. at 12–13 (citing
`Ex. 1004, 50:30–43).
`Numazaki only provides some details about the photo-detection
`sensor unit. See generally Ex. 1004, 50:25–54:6. However, Petitioner relies
`on Numazaki’s teaching that “light and camera arrangement” of Figure 2 “is
`incorporated into the eighth embodiment” for more details about the photo-
`detection sensor unit. Pet. 13–14; see also id. at 9 (citing Ex. 1010 ¶¶ 42–43)
`(discussing what a PHOSITA would have understood was incorporated into
`the eighth embodiment). Petitioner describes Numazaki as teaching a system
`where two images are obtained of the target object by two different cameras,
`one with the lighting unit on and one with it off. Id. at 14 (citing Ex. 1007,
`11:20–39). The images are compared to obtain certain information. Id.
`(citing Ex. 1007, 11:43–51). Petitioner concludes that the obtained
`“information is then used by feature data generation unit 103 to determine
`gestures, pointing, etc. of the target object that may be converted into
`commands executed by a computer” and that this all reads on the
`determining step of claim 1. Id. (citing Ex. 1007, 10:57–66).
`Patent Owner argues that Numazaki does not teach aspects of the
`providing a camera and determining a gesture steps of claim 1. Prelim. Resp.
`6–8. We address each argument in turn below.
`
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`Patent 8,553,079 B2
`(1) Providing a camera
`Claim 1 requires “providing a camera oriented to observe a gesture
`performed in the work volume, the camera being fixed relative to the light
`source.” Ex. 1001, 13:5–7. As noted above, Petitioner relies on Numazaki’s
`portable computer with an information input generation device of Figure 74
`with its photo-detection sensor unit (702) for the providing a camera method
`step of claim 1. Pet. 12–13. We determine that Petitioner’s showing is
`sufficient at this stage.
`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.
`Patent Owner further argues that “[t]he Petition concedes Numazaki
`requires two photo-detection units [i.e. cameras]. See Pet., p. 14. There is no
`teaching or suggestion of one or more cameras oriented to observe a gesture
`performed in the work volume.” Prelim. Resp. 7. However, again it is
`unclear on this record why Numazaki’s two cameras are not “one or more
`cameras” or why this teaching of Numazaki does not read on the claim.
`
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`Patent 8,553,079 B2
`Further, as can be seen in Numazaki’s Figure 74, reproduced below, it is
`unclear why a PHOSITA would not understand the cameras at the photo-
`detection sensor unit (702) as oriented to observe a [hand] gesture performed
`in the work volume represented by the dotted circle.
`
`
`Figure 74 shows a portable computer with an information input
`generation device. Ex. 1004, 50:25–29.
`For the above reasons, Patent Owner’s arguments do not undermine
`the showing by Petitioner that Numazaki teaches all of the aspects of the
`providing a camera claim element for purposes of this Decision.
`(2) Determining the Gesture
`Claim 1 requires “determining, using the camera, the gesture
`performed in the work volume and illuminated by the light source.” Ex.
`1001, 13:8–9. As noted above, Petitioner relies on Numazaki to teach this
`step, where Numazaki’s lighting and photo-detection sensor units are used to
`determine a hand gesture in the area above the laptop. Pet. 12–13 (citing Ex.
`1004, 50:30–43). Petitioner further relies on Numazaki’s teaching that “light
`and camera arrangement” of Figure 2 “is incorporated into the eighth
`embodiment” for more details about the photo-detection sensor unit. Id. at
`
`11
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`IPR2021-00922
`Patent 8,553,079 B2
`13–14; see also id. at 9 (citing Ex. 1010 ¶¶ 42–43). We determine that
`Petitioner’s showing is sufficient at this stage.
`Patent Owner continues the above line of argument, arguing that
`“Numazaki does not teach or suggest ‘determining, using the camera, the
`gesture performed in the work volume and illuminated by the light source,’”
`because “Numazaki requires two photo-detection units [i.e. cameras] to
`perform an analysis.” Prelim. Resp. 7. As Patent Owner acknowledges that
`“‘a camera’ means one or more cameras,” it is again unclear why
`Numazaki’s two cameras are insufficient to read on the claim.
`Patent Owner also argues that “Numazaki does not teach or suggest
`[the determining step] . . . absent the other hardware that Numazaki
`identifies as necessary, such as the image-subtraction circuitry and
`associated timing circuitry.” Id. at 8.
`The claimed phrase “determining, using the camera” does require that
`one or more cameras be involved in the determining step. However, it does
`not, at least on this record, prohibit other hardware from being involved. For
`example, the claim does not say “determining, using only the camera.” Thus,
`the fact that “Numazaki identifies as necessary . . . the image-subtraction
`circuitry and associated timing circuitry” does not prevent Numazaki from
`teaching or suggesting the limitations of “open-ended” claim 1. Id. at 7, 8.
`Patent Owner then argues that “Numazaki teaches away because it
`requires that one of the photo-detection units capture with lighting unit 101
`off (Ex. 1004, 11:30-32, Fig. 2), which is contrary to the claim, which
`requires ‘direct illumination.’” Id. at 8 (emphasis omitted).
`However, the claim does not require that the gesture remain
`permanently illuminated, but rather requires “determining, using the camera,
`the gesture performed in the work volume and illuminated by the light
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`Patent 8,553,079 B2
`source.” Ex. 1001, 13:8–9. Numazaki teaches, as stated by Patent Owner,
`that “[t]he first photo-detection unit 109 requires that a lighting unit 101
`emit light during detection” of the gesture. Prelim. Resp. 7 (citing Ex. 1004,
`11:26–30, Fig. 2); see also Pet. 14. At this stage, we determine that this is all
`that the claim appears to require.
`The fact that Numazaki also teaches “the second photo-detection unit
`110 detects [the gesture] while lighting unit 101 is not active” is not
`excluded by the language of the claim. Further, the fact that Numazaki
`compares both images in determining the gesture does also not appear to be
`excluded by the claim. The claim merely requires that the determining be
`made “using the camera,” that the gesture [be] performed in the work
`volume” and that the gesture be “illuminated by the light source” at some
`point in time.
`For the above reasons, Patent Owner’s arguments do not undermine
`the showing by Petitioner that Numazaki teaches all of the aspects of the
`determining a gesture claim element for purposes of this Decision. For all of
`these reasons, we determine that the Petition has established a reasonable
`likelihood of success with respect to claim 1.
`c) Claims 11 and 21
`Independent claim 11 is directed to a computer apparatus and is very
`similar to method claim 1. Compare Ex. 1001, 13:31–39 with id. at 13:1–9.
`Independent claim 21 is directed to a computer implemented method and is
`very similar to method claim 1. Compare id. 14:14–22 with id. at 13:1–9. As
`such, the Petition relies on the essentially the same teachings of Numazaki
`discussed above with respect to claim 1 for the features of claims 11 and 21,
`which we agree with for purposes of this Decision for the reasons explained
`above. See Pet. 28–30, 33.
`
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`Similarly, Patent Owner argues that the Petition fails to teach or
`suggest the claim elements of claims 11 and 21 “for the same reason[s]
`above with respect to claim [1].” Prelim. Resp. 13, 16, 17. Patent Owner
`then reiterates some of the same arguments discussed above, highlighting
`that the claimed “camera is one or more cameras,” that Numazaki identifies
`additional hardware, and that the claimed work volume is illuminated. Id. at
`13–14. Patent Owner does not provide any additional argument other than
`what has already been addressed with respect to claim 1 above.
`Thus, we determine that the Petition has established a reasonable
`likelihood of success with respect to claims 11 and 21.
`d) Claims 7, 17, and 27
`Claims 7, 17, and 27 depend from claims 1, 11, and 21, respectively
`and are very similar in scope:
`7. . . . providing a target positioned on a user that is viewable in
`the work volume.
`17. . . . including a target that is viewable by the camera when
`in the work volume.
`27. . . . providing a target positioned on the user that is viewable
`by the camera.
`Ex. 1001, 13:21–23, 14:5–7, 14:35–37.
`Petitioner argues9 that Numazaki teaches using a hand as a target
`object with the work volume. Pet. 22–23 (citing Ex. 1004, 10:57–66, 50:35–
`37, Figs. 74, 77). Petitioner also argues that Numazaki recognizes “that it
`was known to paint a fingertip or to wear a ring in a particular color to
`improve detection.” Id. at 23 (citing Ex. 1004, 3:4–11). Petitioner argues that
`
`
`9 Petitioner relies on the same positions laid out with respect to claim 7 to
`show how the prior art teaches or suggests claims 17 and 27. See Pet. 33, 34.
`
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`in view of these teachings in Numazaki, “[a] PHOSITA would have
`understood . . . that the Fig. 74 arrangement described in the eighth
`embodiment [of Numazaki] is particularly well suited to a ring or other
`small target mounted on a user’s finger.” Id. (citing Ex. 1010 ¶¶ 48–49).
`Petitioner acknowledges, however, that Numazaki “cautions that
`requiring users to wear or mount some external component may negatively
`impact the user’s convenience and may bring with it durability issues.” Id.
`(citing Ex. 1004, 3:32–38). Petitioner relies on the testimony of its declarant
`to support its position that “users would accept” the tradeoff “of improved
`accuracy in exchange for the minor inconvenience of wearing a small ring or
`other hand-based target when using gesture recognition while typing.” Id.
`(citing 1010 ¶¶ 48–49). Further, Petitioner argues that “the durability
`concerns are implicated by a ring target, and many adults wear rings
`routinely while typing with no ill effect, which suggests that such a tradeoff
`would be acceptable to many users.” Id. at 23–24 (citing 1010 ¶¶ 48–49).
`Patent Owner argues10 that the portions of Numazaki that Petitioner
`discusses, identifying the user’s inconvenience and durability issues (Ex.
`1004, 3:32–38), teach away from using a ring as a target. Prelim. Resp. 11
`(“Numazaki explicitly criticizes, discredits, and discourages investigation
`into the use of targets (i.e., Numazaki’s markers or elements)). Patent Owner
`further argues that “a P[H]OSITA would be led in a path (i.e., an anti-target
`path) that is divergent from the path in claim 7.” Id.
`At this stage, Patent Owner’s statement about the actions of a
`PHOSITA amount to unsupported attorney argument. Further, Patent Owner
`
`
`10 Patent Owner reiterates the main points made with respect to claim 7 to
`argue over claims 17 and 27. See Prelim. Resp. 15–16, 18–19.
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`does not address Petitioner’s evidence that a PHOSITA would accept the
`tradeoff of less durability for improved accuracy to overcome the potential
`teaching away in Numazaki.
`For these reasons, we determine that the Petition has established a
`reasonable likelihood of success with respect to claims 7, 17, and 27.
`e) Claims 2, 4–6, 8–10, 12–14, 19, 22, 24–26, 28, 30
`Petitioner argues that Numazaki in view of the knowledge of a
`PHOSITA would have rendered obvious dependent claims 2, 4–6, 8–10, 12–
`14, 19, 22, 24–26, 28, and 30. Pet. 14–21, 24–28, 30–35. Patent Owner does
`not separately contest Petitioner’s assertions regarding these claims at this
`stage. See generally Prelim. Resp. We have reviewed Petitioner’s assertions
`and the supporting evidence, and determine that Petitioner has established a
`reasonable likelihood of prevailing with respect to claims 2, 4–6, 8–10, 12–
`14, 19, 22, 24–26, 28, and 30.
`5. Obviousness over Numazaki and Numazaki ’863, Numazaki and
`DeLuca, Numazaki and DeLeeuw, and Numazaki and Maruno
`Petitioner argues that the combination of Numazaki and Numazaki
`’863 would have rendered obvious dependent claims 3, 15, and 23. Pet. 35–
`42. Petitioner argues that the combination of Numazaki and DeLuca would
`have rendered obvious dependent claims 16 and 29. Id. at 42–49. Petitioner
`argues that the combination of Numazaki and DeLeeuw would have
`rendered obvious dependent claim 18. Id. at 49–55. Petitioner argues that the
`combination of Numazaki and Maruno would have rendered obvious
`dependent claim 20. Id. at 55–68. Patent Owner does not separately address
`these grounds. See generally Prelim. Resp.
`We have reviewed Petitioner’s assertions with respect to these claims
`and the supporting evidence, and determine that Petitioner has established a
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`reasonable likelihood of prevailing with respect to claims 3, 15, 16, 18, 20,
`23, and 29.
`C. Jurisdiction over Expired Patents
`Patent Owner argues that the Board does not have jurisdiction over
`expired patents. Prelim. Resp. 21. Patent Owner argues:
`35 U.S.C. § 2(a)(1) states that the United States Patent and
`Trademark Office “shall be responsible for the granting and
`issuing of patents. . . .” The Patent Trial Appeal Board is required
`to “conduct inter partes reviews and post-grant reviews pursuant
`to chapters 31 and 32.” 35 U.S.C. § 6(b)(4). The burden of proof
`required to find a claim unpatentable is the preponderance of
`evidence, which is a lower burden of proof than the clear and
`convincing standard applied in district courts. 35 U.S.C. §
`316(a)(9) requires that the Director prescribe regulations “setting
`forth standards and procedures for allowing the patent owner to
`move to amend the patent under subsection(d).” This is due, in
`part, to the fact that there is a lower burden of proof required to
`invalidate a patent before the Board.
`Id. at 21–22.
`Patent Owner appears to be arguing that, because 35 U.S.C.
`§ 316(a)(9) requires the Director to establish procedures to allow for
`amendments of patents and that as expired patents cannot be amended, we
`do not have jurisdiction over expired patents in inter partes review. Id.
`Patent Owner concludes that as “[t]he ’079 Patent has expired, . . . the
`opportunity to amend the ’079 Patent is not available to Patent Owner” and
`therefore “determinations regarding the validity of this expired patent should
`be reserved for Article III courts under the clear and convincing standard.”
`Id. at 22.
`Inter partes review of patents, whether expired or not, fits within the
`USPTO’s mandate “for the granting and issuing of patents” (35 U.S.C.
`§ 2(a)(1)), for as the Supreme Court has stated, “[i]nter partes review is ‘a
`
`17
`
`
`
`IPR2021-00922
`Patent 8,553,079 B2
`second look at an earlier administrative grant of a patent’” (Oil States
`Energy Servs., LLC v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365, 1374
`(2018) (quoting Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144
`(2016)). Our rules have also made clear inter partes review covers expired
`patents. 37 C.F.R. 42.100(b) (2012); see also, e.g., 83 FR 51341 (Oct. 11,
`2018) (Changes to the Claim Construction Standard for Interpreting Claims
`in Trial Proceedings Before the Patent Trial and Appeal Board)11 (“The
`claim construction standard adopted in this final rule also is consistent with
`the same standard that the Office has applied in interpreting claims of
`expired patents and soon-to-be expired patents. See, e.g., Wasica Fin.
`GmbH v. Cont'l Auto. Sys., Inc., 853 F.3d 1272, 1279 (Fed. Cir. 2017)
`(noting that “[t]he Board construes claims of an expired patent in accordance
`with Phillips . . . [and] [u]nder that standard, words of a claim are generally
`given their ordinary and customary meaning”).” ).
`Further, the statutes governing inter partes review do not limit them to
`non-expired patents. For example, 35 U.S.C. § 311(b), which sets forth the
`scope of inter partes review merely refers to patents, with no mention of the
`expiration date. Further, 35 U.S.C. § 311(c) entitled “Filing Deadline”
`makes no mention of the expiration date of the patent. Elsewhere, 35 U.S.C.
`§ 315 does limit the filing of IPRs based on civil actions and the serving of
`complaints, but again makes no mention of the expiration date of the patent.
`Patent Owner does not identify any statute that expressly limits inter partes
`review to non-expired patents.
`Patent Owner fails to adequately explain why the requirement to
`establish procedures to allow for amendments to a patent means that expired
`
`
`11 Available at https://www.federalregister.gov/d/2018-22006/p-13.
`
`18
`
`
`
`IPR2021-00922
`Patent 8,553,079 B2
`patents are not subject to inter partes review. For example, the statute does
`not mandate that amendments to the patent be allowed in all cases.
`For all of these reasons, we do not agree that the Board lacks
`jurisdiction over expired patents.
`
`
`III. CONCLUSION
`For the foregoing reasons, we have determined that there is a
`reasonable likelihood that the Petitioner would prevail with respect to at
`least one of the claims challenged in the Petition. We therefore institute trial
`as to all challenged claims on all grounds stated in the Petition.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, inter partes review of claims 1–30 of U.S. Patent
`8,553,079 B2 is instituted on all grounds in the Petition;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`will commence on the entry date of this decision.
`
`
`
`
`
`
`
`
`
`
`
`
`19
`
`
`
`IPR2021-00922
`Patent 8,553,079 B2
`FOR PETITIONER:
`Adam P. Seitz
`Paul R. Hart
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`
`
`
`
`FOR PATENT OWNER:
`Todd E. Landis
`John Wittenzellner
`WILLIAMS SIMONS & LANDIS PLLC
`tlandis@wsltrial.com
`johnw@wsltrial.com
`
`
`
`20
`
`
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