IPR2021-00923
`Patent 8,194,924
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`APPLE INC.
`
`Petitioner,
`v.
`GESTURE TECHNOLOGY PARTNERS, LLC
`
`Patent Owner
`__________________
`Inter Partes Review No. IPR2021-00923
`Patent No. 8,194,924
`PATENT OWNER’S RESPONSE TO THE PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,194,924
`
`Filed on behalf of Patent Owner by:
`
`Todd E. Landis (Reg. No. 44,200)
`2633 McKinney Ave., Suite 130
`Dallas, TX 75204
`
`John Wittenzellner (Reg. No. 61,662)
`1735 Market Street, Suite A #453
`Philadelphia, PA 19103
`
`Adam B. Livingston (Reg. No. 79,173)
`601 Congress Avenue, Suite 600
`Austin, TX 78701
`WILLIAMS SIMONS & LANDIS PLLC
`
`
`
`

`

`IPR2021-00923
`Patent 8,194,924
`
`I.
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`THE BOARD DOES NOT HAVE JURISDICTION OVER EXPIRED
`PATENTS ........................................................................................................ 1
`III. PETITIONER’S ASSERTED GROUNDS OF UNPATENTABILITY ........ 3
`IV. PROCEDURAL HISTORY ............................................................................ 3
`V.
`THE ’924 PATENT ......................................................................................... 3
`A. The Technology of the ’924 Patent ........................................................ 3
`B. Prosecution History of the ’924 Patent ................................................... 6
`C. Level of Ordinary Skill in the Art .......................................................... 7
`D. Claim Construction ................................................................................. 7
`VI. RESPONSE TO ISSUES RAISED IN THE PETITION ................................ 7
`
`1. Mann and Numazaki do not render independent claim 1
`obvious because they do not teach or suggest claim element
`[1(e)] ............................................................................................ 7
`2. Mann and Numazaki do not render dependent claim 2
`obvious because they do not teach or suggest all the
`elements of claim 2 ...................................................................25
`Dependent Claims 3-6, 11, and 14 ............................................29
`3.
`B. Ground 2 – The Combination of Mann, Numazaki, and Amir Does
`Not Render Claims 7, 8, 10, 12, and 13 Obvious ................................. 29
`C. Ground 3 – The Combination of Mann, Numazaki, and Aviv Does
`Not Render Claims 6 and 9 Obvious .................................................... 33
`1.
`Dependent Claim 6....................................................................36
`VII. CONCLUSION ..............................................................................................37
`
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`
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`
`
`TABLE OF AUTHORITIES
`
`IPR2021-00923
`Patent 8,194,924
`
`Cases
`Donner Technology, LLC v. Pro Stage Gear, LLC,
` 979 F.3d 1353 (Fed. Cir. 2020) ............................................................................24
`
`In re Gordon,
` 733 F.2d 900 (Fed. Cir. 1984) ..............................................................................18
`
`In re Klein,
` 647 F.3d 1343 (Fed. Cir.2011) .............................................................................23
`
`In re Mouttet,
` 686 F.3d 1322 (Fed. Cir. 2012) ............................................................................18
`
`In re Ratti,
` 270 F.2d 810 (CCPA 1959) ..................................................................................18
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd.,
` 821 F.3d 1359 (Fed. Cir. 2016) ............................................................................22
`
`Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC,
` 138 S. Ct. 1365 (2018) ........................................................................................1,2
`
`
`
`
`ii
`
`

`

`Exhibit
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`2001
`
`2002
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`
`
`
`
`
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`
`
`IPR2021-00923
`Patent 8,194,924
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`EXHIBIT LIST
`
`Description
`Claim Construction Memorandum and Order
`
`Declaration of Benedict Occhiogrosso, in Support of Gesture
`
`Technology Partners, LLC’s Patent Owner Response
`
`
`
`
`
`
`
`iii
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`

`

`IPR2021-00923
`Patent 8,194,924
`
`I.
`
`INTRODUCTION
`
`Gesture Technology Partners, LLC (“Patent Owner”) respectfully submits this
`
`Response to Apple Inc.’s (“Petitioner”) Petition for Inter Partes Review (“IPR”) No.
`
`IPR2021-00923 (the “Petition” or “Pet.”) of U.S. Patent No. 8,194,924 (the “’924
`
`Patent”).
`
`The Board does not have jurisdiction over the ’924 Patent because it has
`
`expired and thus this IPR should be terminated. Further, Petitioner fails to show
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`unpatentability of claims 1-14 of the ’924 Patent (the “Challenged Claim(s)”)
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`because Petitioner’s Grounds fail to disclose or render obvious one or more elements
`
`of each Challenged Claim.
`
`II. THE BOARD DOES NOT HAVE JURISDICTION OVER EXPIRED
`PATENTS
`
`In Oil States, the Supreme Court explained that the “decision to grant a patent
`
`is a matter involving public rights—specifically, the grant of a public franchise.” Oil
`
`States Energy Servs., LLC v. Greene's Energy Grp., LLC, 138 S. Ct. 1365, 1373
`
`(2018). “Specifically, patents are public franchises that the Government grants to
`
`the inventors of new and useful improvements.” Id. (internal quotation marks
`
`omitted). The Court explained that “Congress [has] significant latitude to assign
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`[the] adjudication of public rights to entities other than Article III courts.” Id. at
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`1368. In exercising its “significant latitude,” Congress grants public franchises
`
`“subject to the qualification that the PTO has the authority to reexamine—and
`
`1
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`perhaps cancel—a patent claim in an inter partes review.” Id. at 1368, 1374 (internal
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`IPR2021-00923
`Patent 8,194,924
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`quotation marks omitted). Accordingly, so long as the public franchise exists, the
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`PTO may have jurisdiction to amend and cancel the claims of the patent (e.g., via
`
`inter partes review).
`
`When a patent expires, however, the public franchise ceases to exist and the
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`franchisee (e.g., the patent owner) no longer has the right to exclude others. At most,
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`the franchisee may be entitled to collect damages from the public franchise that
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`formerly existed through an infringement action in district court. But because the
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`public franchise no longer exists, the PTO has nothing in its authority to cancel or
`
`amend. Expiration removes the patent from the PTO’s jurisdiction and returns it to
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`the sole jurisdiction of the Article III courts, which have exclusive authority to
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`govern claims for damages. If this were not so, the PTO would purport to have
`
`authority to retroactively modify a public franchise that no longer exists, in a setting
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`where the expired public franchise does not enjoy any presumption of validity and
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`in which amendment of claims is no longer permitted.
`
`The ’924 Patent issued in June 2012 and expired in July 2020, long before the
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`Petition was filed on May 26, 2021. With the expiration of the patent in July 2020,
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`the Board ceased to have jurisdiction over the ’924 Patent, and this IPR should be
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`terminated as a result.
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`

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`IPR2021-00923
`Patent 8,194,924
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`III. PETITIONER’S ASSERTED GROUNDS OF UNPATENTABILITY
`
`Prior Art
`
`Basis
`
`Challenged Claims
`
`Mann and Numazaki
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`§ 103 (Obviousness) 1-6, 11, and 14
`
`Mann, Numazaki, and Amir
`
`§ 103 (Obviousness) 7, 8, 10, 12, and 13
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`Mann, Numazaki, and Aviv
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`§ 103 (Obviousness) 6 and 9
`
`
`IV. PROCEDURAL HISTORY
`
`Petitioner filed this Petition for Inter Partes Review of the ’924 Patent on May
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`26, 2021. Patent Owner submitted a Preliminary Response to the Petition on
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`September 7, 2021. The Board instituted inter partes review as to the Challenged
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`Claims on the Grounds raised in the Petition.
`
`V. THE ’924 PATENT
`A. The Technology of the ’924 Patent
`
`The ’924 Patent is entitled “Camera Based Sensing in Handheld, Mobile,
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`Gaming or Other Devices.” Ex. 1001, Title. The ’924 Patent is directed towards
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`methods and apparatuses “to enable rapid TV camera and computer-based sensing
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`in many practical applications, including, but not limited to, handheld devices, cars,
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`and video games.” Ex. 1001, Abstract. The claims of the ’924 Patent relate in
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`general to “input devices for computers, particularly, but not necessarily, intended
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`for use with 3-D graphically intensive activities, and operating by optically sensing
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`a human input to a display screen or other object and/or the sensing of human
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`IPR2021-00923
`Patent 8,194,924
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`positions or orientations.” Id., 2:7-11.
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`The ’924 Patent describes the use of computer devices and one or more
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`cameras that “optically sens[e] human input” with applications in a “variety of fields
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`such as computing, gaming, medicine, and education.” Id. In general, the ’924
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`Patent discloses numerous applications in which a user or an object held by a user
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`control a computer with one or more cameras as depicted in Fig. 1A below.
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`
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`Id., Fig. 1A. In this embodiment, there are multiple cameras (100, 101, 144) located
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`on a monitor (102) with a screen facing a user (103) and connected to a computer
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`(106). Id., 3:27-57.
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`The ’924 Patent also discloses a handheld device, such as a cell phone, that
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`processes imaging from a person or object to control functions on the handheld
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`device. Id., 11:65-12:67. The ’924 Patent describes that the handheld device can
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`IPR2021-00923
`Patent 8,194,924
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`“perform a control function by determining [] position, orientation, pointing
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`direction or other variable with respect to one or more external objects, using an
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`optical sensing apparatus . . . or with a camera located in the handheld device, to
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`sense datums or other information external for example to the device.” Id., 12:4-12.
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`The ’924 Patent describes that the device is able to “acquire features of an object and
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`use it to determine something” such as object recognition. Id., 13:5-25.
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`Further, the ’924 Patent discloses a handheld computer with multiple cameras
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`that can be rotated, as depicted in Fig. 18 below.
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`Id., Fig. 18. The handheld computer (1901) includes a “stereo pair of cameras”
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`IPR2021-00923
`Patent 8,194,924
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`(1902, 1910) that can be used to observe gestures of the user holding the handheld
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`computer (1901) or gestures of another user. Id., 25:50-63, 26:25-40. Images from
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`one or more of the cameras (1902, 1910) may be processed to utilize functions of
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`the handheld computer (1901). Id., 25:50-67, 26:1-51
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`B.
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`Prosecution History of the ’924 Patent
`
`The ’924 Patent issued from U.S. Patent Application Serial No. 13/051,698
`
`(the “’698 application”), which filed on March 18, 2011. The ’698 application is a
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`continuation of U.S. Patent Application Serial No. 12/834,281 (the “’281
`
`application), which filed Jul. 12, 2010. The ’281 application is a continuation of
`
`U.S. Patent Application Serial No. 11/980,710 (the “‘710 application”), which filed
`
`on October 31, 2007. The ’710 application is a continuation of U.S. Patent
`
`Application Serial No. 10/893,534 (the “’534 application”), which filed July 19,
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`2004. The ’534 application is a continuation of U.S. Patent Application Serial No.
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`09/612,225 (the “’225 application”), which filed on July 7, 2000. The ’225
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`application claims priority to U.S. Provisional Patent Application Serial No.
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`60/142,777, which filed on July 8, 1999.
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`C. Level of Ordinary Skill in the Art
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`IPR2021-00923
`Patent 8,194,924
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`For the purposes of this Response only, Patent Owner does not dispute the
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`level of skill of a person of ordinary skill in the art (“POSITA”) identified in the
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`Petition.
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`D. Claim Construction
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`Patent Owner does not contest the constructions proposed in the Petition for
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`the purpose of the Response. See Pet., p. 7.
`
`VI. RESPONSE TO ISSUES RAISED IN THE PETITION
`A. Ground 1 – Mann and Numazaki Do Not Render Claims 1-6, 11,
`and 14 Obvious
`
`The combination of Mann and Numazaki (the “Ground 1 References”) does
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`not render claims 1-6, 11, and 14 obvious.
`
`1. Mann and Numazaki do not render independent claim 1
`obvious because they do not teach or suggest claim element
`[1(e)]
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`Claim element [1(e)] recites “wherein the computer is adapted to perform a
`
`control function of the handheld device based on at least one of the first camera
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`output and the second camera output.” Claim element [1(e)] requires the “first
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`camera output” be an output of a “first camera oriented to view a user of the handheld
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`device.” Compare claim element [1(e)] with claim element [1(c)]. The Petition’s
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`contentions regarding claim element [1(e)] do not invoke the recited “second camera
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`output.” See Pet., pp. 20-25 and 38-42. The Board agreed in the Institution Decision.
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`Paper 10, p. 15 (“The Petition does not address the alternative involving the second
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`IPR2021-00923
`Patent 8,194,924
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`camera output.”). Instead, the Petition relies solely on modifying the alleged first
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`camera in Mann in view of Numazaki, which allegedly teaches or suggests “wherein
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`the computer is adapted to perform a control function of the handheld device based
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`on” the first camera output. Pet., pp. 38-42.
`
`The Petition concedes that Mann (Ex. 1004) does not disclose “wherein the
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`computer is adapted to perform a control function of the handheld device based on”
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`the first camera output. Pet., pp. 38-42. The Petition attempts to address this
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`shortcoming in Mann by combining it with Numazaki (Ex. 1005). Id. Patent Owner
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`asserts it would not have been obvious to a POSITA to modify Mann, based on
`
`Numazaki, such that the computer of Mann would perform a control function of the
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`handheld device based on the first camera output as Petition asserts. See Pet., pp.
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`20-25 and 38-42. See also Ex. 2002, ¶ 44.
`
`Numazaki does not teach or suggest “wherein the computer is adapted to
`
`perform a control function of the handheld device based on” the first camera output,
`
`as required by claim element [1(e)]. As a threshold matter, the Petition uses the term
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`“camera units” to refer to what Numazaki describes as “photo-detection units.”
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`Compare Pet., p. 14 (“when the first camera unit is active and off when the second
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`camera unit is active.”) (citing Ex. 1005, 11:20-32) with Ex. 1005, 11:28-32 (“such
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`that the lighting unit 101 emits the light when the first photo-detection unit 109 is in
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`a photo-detecting state, whereas the lighting unit 101 does not emit the light when
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`IPR2021-00923
`Patent 8,194,924
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`the second photo-detection unit 110 is in a photodetecting state.”). This Response
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`will use the term “photo-detection unit” (i.e., the term used in Numazaki) to refer to
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`what the Petition identifies as “camera units.” See 2002, ¶ 45.
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`Numazaki does not teach “a computer adapted to perform a control function
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`of the hardware device based on at least one of the first camera output and the second
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`camera output.” Numazaki discloses a “reflected light extraction unit 102” with a
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`“first photo-detection unit 109,” a “second photo-detection unit 110,” and a
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`“difference calculation unit 111.” Ex. 1005, 10:57-66; 11:20-51; Fig. 2. The first
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`photo-detection unit 109 requires that a lighting unit 101 emit light during detection.
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`Id. at 11:26-30, Fig. 2. Later, at a different time, when first photo-detection unit 109
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`is not active, the second photo-detection unit 110 detects while lighting unit 101 is
`
`not active. Id., 11:30-32, Fig. 2. Those two images—the image from the first photo-
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`detection unit 109 and the image from the second photo-detection unit 110—are then
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`subtracted from each other to create a third image referred to as the “reflected light
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`image.” See id., 10:57-66; 11:43-56. That image is not the output of any photo-
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`detection unit and thus not an output of a camera because Petitioner equates the
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`photo-detection units to the cameras of claim 1—“A PHOSITA would have
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`considered Numazaki’s photo-detection units to be camera units. Bederson Dec.
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`(Ex. 1003), ¶ 39 (explaining that Numazaki describes using CMOS or CCD sensor
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`units at 15:24-16:19, which were two of the more common optical sensors used in
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`IPR2021-00923
`Patent 8,194,924
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`camera units at the time).” Pet., p. 14, n. 1. But Numazaki performs all of its control
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`functions based on the created “reflected light image,” rather than any images output
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`from the photo-detection units. See Ex. 2002, ¶ 46.
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`Because Numazaki requires two images to perform an analysis and operate
`
`the computer, it does not teach or suggest “wherein the computer is adapted to
`
`perform a control function of the handheld device based on” the first camera output.
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`Similarly, Numazaki does not teach or suggest performing a control function of a
`
`handheld device absent the other hardware that Numazaki identifies as necessary,
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`such as the lighting unit, the image-subtraction circuitry, and the associated timing
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`circuitry. The Petition does not recognize this deficiency in Numazaki. See Pet., pp.
`
`13-15. Nor does it argue that it would have been obvious to modify Numazaki to
`
`meet this claim element. See id. Thus, Mann and Numazaki, whether viewed
`
`separately or in combination, fail to teach or suggest limitation [1(e)]. See Ex. 2002,
`
`¶ 47.
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`Further, the Petition contends that a POSITA would have been motivated to
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`“utilize Mann’s front-facing camera to recognize gestures performed in front of that
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`camera pursuant to the teachings of Numazaki” because “such gestures would draw
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`much less attention than physically interacting with [Mann’s] watch face or using
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`[Mann’s] PDA stylus,” and “remaining covert and avoiding attention from the
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`IPR2021-00923
`Patent 8,194,924
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`subject are goals of [Mann’s] invention.” Pet., 20-22. Patent Owner disagrees.
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`The Petition fails to provide any explanation or reasoning as to why
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`Numazaki’s no-touch gestures would draw “much less” attention than physically
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`interacting with a watch interface or using a stylus on a PDA. Pet., 21. While the
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`Petition contends that physically touching a watch interface or using a stylus to
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`interact with the PDA “runs the risk of being noticed by the subject,” Patent Owner
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`asserts that performing stroke gestures in the air above the watch or above the PDA
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`results in an even greater risk of being noticed by the subject. Id. This is based on
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`at least: (a) watches long predate handheld computing devices and these watches
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`were operated by physical interactions (e.g., winding); and (b) the PDA comes with
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`a stylus specifically designed for physical contact with a display of the PDA. See
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`Ex. 2002, ¶ 49. Accordingly, physically interacting with a watch or PDA is what
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`would be expected, while no-touch gesture recognition is much more recent, and
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`thus more likely to intrigue the subject and draw their attention. The Board agreed
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`these arguments have merit in the Institution Decision. Paper 10, p. 20 (“On this
`
`record, Patent Owner’s arguments appear to have merits.”). See Ex. 2002, ¶ 49.
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`The alleged support from the Bederson declaration provides no additional
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`insight as to why no-touch gestures would be “much less” likely than physical
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`interactions to draw the subject’s attention. Ex. 1003, ¶ 47. See Ex. 2002, ¶ 49.
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`Moreover, Bederson does not identify any experience or expertise in things of a
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`Patent 8,194,924
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`“covert nature,” and thus the Bederson Declaration should be given no weight on
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`this matter. The Board agreed in the Institution Decision. Paper 10, p. 20 (“Further,
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`the declarant does not identify any experience or expertise in things of a ‘covert
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`nature.’ See id. at App. A (declarant’s resume). Thus, we give the Bederson
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`Declaration testimony little weight on this point.”).
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`Further, Mann discloses that a user interacts with its “touch sensitive
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`clockface” using finger strokes. Ex. 1004, p. 18. By definition, a finger stroke is
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`not a stationary gesture. Accordingly, Numazaki would need to generate a set of
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`images to capture the finger stroke. See Ex. 2002, ¶ 50.
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`As discussed above, to capture a stationary gesture, Numazaki requires two
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`images from two different photo-detector units, where the lighting unit is active (i.e.,
`
`on) for one image but not active (i.e., off) for the other image. To capture the non-
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`stationary finger stroke gesture, this process would need to be repeated multiple
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`times, which would cause the lighting unit to flicker. It is likely the flickering would
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`draw attention to the user’s interaction with Mann’s watch or PDA, which, as
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`acknowledged by Petition, is exactly what Mann wants to avoid. Pet., pp. 20-21
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`(“remaining covert and avoiding attention from the subject are goals of [Mann’s]
`
`invention”). See Ex. 2002, ¶ 51. Accordingly, the motivation to combine the
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`references is lacking.
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`Further, the Petition contends that a POSITA would have been motivated to
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`IPR2021-00923
`Patent 8,194,924
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`
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`“implement Mann’s device with the no-touch gesture functionality” taught by
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`Numazaki because “Mann’s native touch-based gesture control . . . would obstruct[]
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`the user’s view of the watch face and PDA display when the user [touches] the
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`device.” Pet., pp. 22-23. Patent Owner disagrees. See Ex. 2002, ¶ 52.
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`Even assuming arguendo that an obstruction does occur with the watch face
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`or PDA display when the user physically interacts with the watch or PDA,
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`respectively, the obstruction is very brief “to stop recording, [] to kill all processes
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`and halt the processor, [] to wake up the system from sleep mode.” Ex. 1004, p.17.
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`Further, Mann even suggests that an obstruction to the watch face is of little concern
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`because “the clock menu is usable without paying much attention to the face of the
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`clock.” Ex. 1004, p. 18. See also Ex. 2002, ¶ 53.
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`Moreover, Mann is focused on using the watch or PDA to record a subject
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`“without the subject’s knowledge or at least without the subject being certain as to
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`whether or not said picture or video is being taken.” Ex. 1004, p. 9. While these
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`physical interactions may present a temporary obstruction, physical interactions with
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`a watch and PDA are common and expected, and thus provide a cover for the user
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`to trigger the recording. By implementing Mann’s device with no-touch gesture
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`functionality, this cover would be lost, making it more difficult for the user to remain
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`covert and avoid attention from the subject. Accordingly, the motivation to combine
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`IPR2021-00923
`Patent 8,194,924
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`the references is lacking. See Ex. 2002, ¶ 54.
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`Mann unambiguously states that “[i]t is an object of this invention to provide
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`a method of positioning a camera to take a picture or video of a subject without the
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`subject's knowledge or at least without the subject[] being certain as to whether or
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`not said picture or video is being taken.” Ex. 1004, p. 9. Mann then goes on to say
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`that “[i]t is a further object of this invention to provide such a method of taking a
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`picture or video where no apparent difference in body movement or gesture between
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`when a picture is being taken and when no picture is being taken is detectable by
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`others.” Ex. 1004, p. 9. Additionally, Mann expresses states that gestures are
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`unwanted because they draw attention to the user of the device. Mann states
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`“Current state-of-the-art photographic or video apparatus causes a visual disturbance
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`to others and attracts considerable attention on account of the gesture of bringing the
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`camera up to the eye. Even if the size of the camera could be reduced to the point of
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`being negligible (e.g. no bigger than the eyecup of a typical camera viewfinder, for
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`example), the very gesture of bringing a device up to the eye is unnatural and attracts
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`considerable attention, especially in establishments such as department stores where
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`photography is often prohibited.” Ex. 1004, pp. 4-5. Mann’s inventions
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`intentionally avoid gestures because they attract considerable attention. Given this,
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`a POSITA would not seek to combine Mann with the gesture technology of
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`Numazaki because using such technology would defeat the purpose of Mann in
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`having a device that is covert. See Ex. 2002, ¶ 55. Accordingly, a POSITA would
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`understand Mann as teaching away from the recognition of gestures. See Ex. 2002,
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`¶ 55.
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`Further, the Petition contends that a POSITA would have been motivated to
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`“implement Mann’s device with the no-touch gesture functionality” taught by
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`Numazaki because Mann’s native touch-based gesture control would result in the
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`user’s fingers touching the glass covering the user-facing camera, “causing the
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`fidelity of that camera to decrease over time due to grease and grime from the user’s
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`finger.” Pet., pp. 22 and 24. Patent Owner disagrees. See Ex. 2002, ¶ 56.
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`Mann discloses a wristwatch as depicted in Fig. 3 below.
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`IPR2021-00923
`Patent 8,194,924
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`Ex. 1004, Fig. 3 (annotated). The wristwatch includes a face having a user-facing
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`camera (350) and a display unit (320) that is rectangular and functions as a
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`viewfinder for camera (310). As shown, the user-facing camera (350) is separate
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`from the display unit (320). Ex. 1004, p. 16; Fig. 3. Mann also discloses that the
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`wristwatch display (400) is “480 pixels down and 640 across” (i.e., a rectangle) and
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`includes a circle containing a clock. Ex. 1004, p.17; Fig. 4. A portion of Fig. 4 is
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`reproduced below:
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`IPR2021-00923
`Patent 8,194,924
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`Ex. 1004, Fig. 4 (annotated). Mann discloses the wristwatch display (400) is
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`“superimposed on top of a video signal from the camera.” Ex. 1004, p. 17. This
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`means that Mann’s rectangular display (400) with the circular clock fits on top of
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`the rectangular display unit (320) (i.e., the viewfinder for camera (310)), and thus
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`does not overlap with the separate user-facing camera (350). The user interacts with
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`the clock by “strok[ing] the face of the clock in the direction desired.” Ex. 1004, p.
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`18. Accordingly, the user’s finger strokes are confined to the glass above the display
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`unit (320) (i.e., above the face of the clock), leaving the glass above user-facing
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`camera (350) untouched. See Ex. 2002, ¶ 57. The Petition’s stated problem serving
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`as the motivation for combining the references does not actually exist. See Ex. 2002,
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`IPR2021-00923
`Patent 8,194,924
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`¶ 57. The Board agreed these arguments have merit in the Institution Decision.
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`Paper 10, p. 22 (“On this record, Patent Owner’s arguments appear to have merits.”).
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`Further, there is no motivation to execute the proposed modification of Mann
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`to include the teachings of Numazaki because the proposed modification would
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`render Mann unsatisfactory for its intended purpose and/or change Mann’s principle
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`of operation. If a proposed modification would render the prior art invention being
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`modified unsatisfactory for its intended purpose, then there is no suggestion or
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`motivation to make the proposed modification. In re Gordon, 733 F.2d 900 (Fed.
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`Cir. 1984). If the proposed modification or combination of the cited art would
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`change the principle of operation of the cited art reference being modified, then the
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`teachings of the references are not sufficient to render the claim obvious. See In re
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`Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (discussing In re Ratti, 270 F.2d 810,
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`813 (CCPA 1959)). See Ex. 2002, ¶ 58.
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`Mann discloses a mobile device (i.e., PDA or wristwatch) having a “camera
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`[that] points forward” for recording a subject (e.g., corrupt official). Ex. 1004, p.
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`16. Mann also discloses the mobile device (i.e., PDA or wristwatch) has a “second
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`camera . . . to record [the user] himself/herself.” Id. Ex. 1004, p. 15. As explained
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`by Mann, “[i]n this way, both sides of the conversation may be simultaneously
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`recorded by the two cameras, so that the resulting recordings could be edited
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`[together] later, so that there could, for example, be a cut back and forth between the
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`IPR2021-00923
`Patent 8,194,924
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`two cameras to follow the natural flow of the conversation. Such a recording might,
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`for example, be used for an investigative journalism story.” Ex. 1004, p. 15. This
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`is unsurprising because Mann describes his invention as a “novel means and
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`apparatus for personal documentary photography and videography.” Id., p. 3. See
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`also id., p. 4 (“In photography (and in movie and video production), it is often
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`desirable to capture events in a natural manner with minimal intervention or
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`disturbance. In the present invention, the scenario to be considered is that of face-
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`to-face conversation between two individuals.”). See Ex. 2002, ¶ 59.
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`As discussed above, Numazaki’s gesture-recognition hardware necessarily
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`includes image-subtraction circuitry for calculating a difference (i.e., a “reflected
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`light image”) between two images captured by two photo-detection units (i.e., two
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`cameras). The “reflected light image” is the output of Numazaki’s gesture-
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`recognition hardware. A POSITA would recognize that while the “reflected light
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`image” may be a useful input to gesture detection software, the “reflected light
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`image” is not a regular image that would be displayed to a person, either as a single
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`still image or within a video (e.g., documentary). In fact, the average person would
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`be confused upon viewing the “reflected light image.” See Ex. 2002, ¶ 60.
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`The Petition describes the combination of Mann and Numazaki as being “a
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`straightforward replacement of Mann’s native user-facing
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`imaging with
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`Numazaki’s gesture-recognition hardware . . . With that hardware swap in place, a
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`straightforward software update [] would allow Mann’s devices to process no-touch
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`gestures.” Pet., p. 21 (emphasis added). But after executing this “straightforward
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`replacement” and “hardware swap,” Mann’s mobile device (i.e., PDA or
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`wristwatch) would only have access to reflected light images of the user. As
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`discussed above, “reflected light images” are not suitable for display to the average
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`person. Accordingly, it would no longer be possible to use Mann’s user-facing
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`camera for its intended purpose. In other words, it would no longer possible for
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`Mann’s mobile device (i.e., wristwatch or PDA) to generate the type of
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`“investigative journalism” with “cut[s] back and forth between the two cameras to
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`follow the natural flow of the conversation.” Ex. 1004, p. 12. This strikes at the very
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`goal of Mann’s invention to capture “face-to-face conversation[s] between two
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`individuals” in “a natural manner with minimal intervention or disturbance.” Id., p.
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`4. See also Ex. 2002, ¶ 61. Accordingly, these modifications to Mann change
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`Mann’s principle of operation and/or render Mann unsatisfactory for its intended
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`purpose. These modifications to Mann are too complex to be considered obvious.
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`See Ex. 2002, ¶ 61.
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`Further, a POSITA would find no motivation to modify Mann’s wristwatch
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`to include the gesture recognition hardware of Numazaki because a user would find
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`performing no-touch gestures above the wristwatch cumbersome. Slight wrist
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`motions would likely cause the gestures being performed to fall outside the field of
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`IPR2021-00923
`Patent 8,194,924
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`view of the camera on Mann’s wristwatch. Mann’s existing touchscreen interaction
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`is more reliable. See Ex. 2002, ¶ 62.
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`Further, the Petition contends that a POSITA would have been motivated to
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`“utilize Mann’s front-facing camera to recognize gestures performed in front of that
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`camera pursuant to the teachings of Numazaki” because the POSITA “would have
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`anticipated success in modifying Mann’s wristwatch based on similarities in
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`functionality and structure of the computer, cameras, and control functionality taught
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`by Mann and Numazaki.” Pet., 21. Petitioner argues that a POSITA “would have
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`recognized that [the] modif[ication] . . . would have required a straightforward
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`replacement of Mann’s native user-facing imaging with Numazaki’s gesture-
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`recognition hardware” and “a straightforward software update (i.e.