UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`GESTURE TECHNOLOGY PARTNERS LLC
`Patent Owner
`___________
`
`
`
`Case No. IPR2021-00923
`U.S. Patent No. 8,194,924
`____________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................ 1
`I.
`II. ARGUMENT ................................................................................................ 4
`A. MANN IN VIEW OF NUMAZAKI RENDERS OBVIOUS CLAIM [1(E)] ...................... 4
`B. A POSITA WOULD HAVE BEEN MOTIVATED TO COMBINE MANN AND
`NUMAZAKI ...................................................................................................... 5
`1. No-touch gestures improve Mann’s covert nature .................................... 5
`
`2. Dr. Bederson alone has extensive experience relevant to the proposed
`combination ............................................................................................... 7
`3. Numazaki’s lighting unit is not visible to humans ..................................... 9
`4. Patent Owner concedes that physically touching Mann’s watch face
`obstructs its display ................................................................................... 9
`5. Patent Owner conflates materially different types of gestures ................ 10
`6. Mann’s touch-based gestures would result in a user’s finger touching
`the camera, decreases its fidelity ............................................................ 11
`7. Patent Owner fails to substantiate its suggestion that Numazaki’s
`imaging hardware is unsuitable for capturing the user during a
`recording and ignores that Numazaki’s approach actually improves
`image quality ........................................................................................... 14
`8. No-touch gestures would be simpler and less conspicuous than touch-
`based gestures ......................................................................................... 17
`9. Patent Owner mischaracterizes the petition’s motivation to combine .... 18
`10. A POSITA would not have found it difficult to incorporate Numazaki’s
`hardware in Mann’s wristwatch ............................................................. 18
`11. Petitioner’s products are irrelevant ........................................................ 19
`C. CLAIM 2: MANN’S DEVICES ARE MOBILE PHONES .......................................... 19
`1. Patent Owner advances an unsupported definition of a mobile phone ... 19
`
`

`

`IPR2021-00923
`U.S. Patent No. 8,194,924
`2. Mann’s explicit disclosure characterizes its wristwatch as a mobile
`telephone ................................................................................................. 20
`D. A POSITA WOULD HAVE BEEN MOTIVATED TO COMBINE MANN AND
`NUMAZAKI WITH AMIR .................................................................................. 21
`1. No technical barriers prevent incorporating Amir’s hardware in
`Mann’s device ......................................................................................... 21
`2. Amir does not require a subject look directly at the camera .................. 22
`
`3. There are benefits to transmitting still images over video ...................... 22
`E. A POSITA WOULD HAVE BEEN MOTIVATED TO COMBINE MANN AND
`NUMAZAKI WITH AVIV .................................................................................. 23
`F. THE PETITION CLEARLY DEFINES THE FIELD OF ENDEAVOR ............................ 24
`G. THE BOARD HAS JURISDICTION TO REVIEW EXPIRED PATENTS ....................... 25
`III. CONCLUSION ........................................................................................... 26
`
`
`
`
`
`
`
`
`

`

`I.
`
`INTRODUCTION
`The Challenged Claims are directed to a handheld device with (1) a user-
`
`IPR2021-00923
`U.S. Patent No. 8,194,924
`
`facing camera, (2) a subject/object-facing camera, and (3) the ability to perform a
`
`control function from the output of one camera.
`
`The Petition is based primarily on a combination of Mann (Ex. 1004) and
`
`Numazaki (Ex. 1005). Mann teaches wristwatch and PDA embodiments in which a
`
`first camera faces the user and a second camera faces a subject:
`
`
`
`Ex. 1004, Figs. 3, 1 (annotated to indicate key components). Mann describes using
`
`these devices in covert applications such as investigative journalism in which the
`
`subject does not know whether the camera is recording. Id., 2-3, 11-12. A first
`
`camera captures the subject and a second camera allows the user to be captured as
`
`well. Id. at 12-13. Important to these covert applications is appearing natural when
`
` 1
`
`

`

`IPR2021-00923
`U.S. Patent No. 8,194,924
`initiating a recording so the subject “cannot readily determine whether or not the
`
`apparatus is in use recording.” Id. at 1-3.
`
`
`
`For device control, Mann teaches physical touch-based interactions such as
`
`the user physically swiping her finger across a portion of the watch face:
`
`
`
`Id. at Fig. 4; see also Paper 1, 19-20. The PDA embodiment uses a traditional stylus
`
`to interact with and control the device. Paper 1, 20.
`
`
`
`Physically interacting with the device risks drawing the subject’s attention.
`
`Namely, when a user physically interacts with the device, the subject recognizes this
`
`as conduct consistent with controlling a device—unwanted attention that runs
`
`contrary to Mann’s covert goals. As set forth in the petition, a POSITA would have
`
`recognized that replacing physical interactions with simple finger gestures over the
`
` 2
`
`

`

`IPR2021-00923
`U.S. Patent No. 8,194,924
`face of the device (e.g., swiping one’s finger over the device in a predetermined
`
`direction) draw less attention, improving the covert nature of the device.
`
`To accomplish these no-touch gestures, the petition proposes incorporating
`
`Numazaki’s no-touch gesture technology. Numazaki expressly describes no-touch
`
`gesture control of both wristwatch and PDA devices, as illustrated below:
`
`
`Ex. 1005, Fig. 79 (annotated), Fig. 78; Paper 1, 15-16 (citing the same).
`
`
`
`The Patent Owner Response (“POR” or “Paper 12”) focuses largely on the
`
`petition’s motivations to combine. These arguments often mischaracterize the record
`
`and/or ignore contradictory teachings. They also routinely rely on unexplained
`
`conclusory opinions from Patent Owner’s expert. In addition to its critiques of the
`
`motivations to combine, Patent Owner attempts to import into Claim 2 features and
`
`functionalities of mobile phones that are not discussed or even contemplated by the
`
`’924 Patent itself.
`
` 3
`
`

`

`IPR2021-00923
`U.S. Patent No. 8,194,924
`
`II. ARGUMENT
`A. Mann in view of Numazaki renders obvious Claim [1(e)]
`In its Preliminary Response, Patent Owner argued that Numazaki’s gesture
`
`detection structure fails to satisfy limitation [1(e)] because it uses two cameras, a
`
`lighting unit, and a difference calculation unit to obtain an image of the gesture that
`
`is the difference between two images, rather than the output of one. Paper 8, 7-9. At
`
`institution, the Board correctly rejected this argument. It first noted that the “the
`
`claim does require that the control function be based on the output of the first camera,
`
`but it does not limit the claim to only that output” and concluded that the limitation
`
`is satisfied because Numazaki’s “feature data generation unit 103 determines
`
`gestures, pointing, etc. based on a comparison between two images . . . [and] one of
`
`those images is an output of the first camera.” Paper 10, 16-17. The Board also
`
`rejected Patent Owner’s argument that Numazaki’s additional components are
`
`relevant to the obviousness inquiry, concluding “the presence of a lighting unit or
`
`other hardware is not excluded from the claim.” Id. at 17.
`
`The POR provides no justification for the Board to modify its preliminary
`
`conclusions. It presents substantively identical arguments to those the Board rejected
`
`at institution, newly including only citations to Mr. Occhiogrosso’s declaration,
`
`which merely parrots the POR’s arguments with no elaboration. Paper 12, 9-10; Ex.
`
`2002, ¶¶ 46-47. Accordingly, the Board should make its preliminary findings final.
`
` 4
`
`

`

`IPR2021-00923
`U.S. Patent No. 8,194,924
`B. A POSITA would have been motivated to combine Mann and
`Numazaki
`The proposed combination “[a]llow[s] users to perform finger-based no-touch
`
`gestures over the user-facing camera in Mann’s devices[,] improv[ing] the covert
`
`nature of these devices[.]” Paper 1, 22 (citing Ex. 1003, ¶ 47). The petition explains
`
`that the extensive similarities in structures and functions between Mann’s and
`
`Numazaki’s wristwatch and PDA embodiments would have made for a
`
`straightforward combination well within the skills of a POSITA. Paper 1, 20-22. It
`
`also explains that Numazaki’s no-touch gestures avoid downsides associated with
`
`Mann’s touch-based gestures such as inadvertently touching the user-facing camera
`
`while interacting with the screen, which decreases fidelity over time. Id. at 22-25.
`
`Addressed in turn below, the POR’s criticisms either mischaracterizes the
`
`proposed combination or the petition’s arguments in support.
`
`1. No-touch gestures improve Mann’s covert nature
`The POR first takes issue with whether physically interacting with the devices
`
`“runs the risk of being noticed by the subject,” contrary to Mann’s covert nature.
`
`Paper 12, 11 (quoting Paper 1, 21). Relying on Mr. Occhiogrosso, the POR argues
`
`that “physically interacting with a watch or PDA is what would be expected,” noting
`
`the long history of users physically interacting with those types of devices in order
`
`to control them. Id. at 11. The POR later raises a similar argument, claiming the
`
`touch-based gestures actually “provide a cover for the user to trigger the recording.”
`
` 5
`
`

`

`IPR2021-00923
`U.S. Patent No. 8,194,924
`Id. at 13-14. The POR suggests that the proposed no-touch gestures are a “more
`
`recent” development and are, accordingly, not commonly associated as actions that
`
`may be used to control a watch or PDA. Id. at 11. From this, the POR concludes that
`
`no-touch gesture recognition would be “more likely to intrigue the [target] subject
`
`and draw their attention.” Id.
`
`In fact, just the opposite is true. In his initial declaration, Dr. Bederson
`
`explained that Mann’s goal is to capture a recording of a subject without drawing
`
`the subject’s attention. Ex. 1003, ¶ 47. He noted that Mann at 1-2 expressly advised
`
`against “creat[ing] a visual disturbance to others and attract[ing] considerable
`
`attention on account of the gesture of bringing the camera up to the eye.” Id. And he
`
`explained that physically touching the device “runs the risk of being noticed by the
`
`subject.” Id. In both circumstances, the user risks drawing the subject’s attention by
`
`performing an action that the subject may recognize as interacting with the device.
`
`Ex. 1018, ¶ 4. For example, when a user brings a camera to the eye, it is unavoidable
`
`that the subject will assume she is being recorded. Id. Similarly, when the user
`
`physically interacts with the watch or PDA, it risks the subject recognizing that the
`
`user has in fact interacted with the device and may have initiated some process
`
`within the device (e.g., a recording). Id. This is one of the key reasons a POSITA
`
`would have understood no-touch gestures draw less attention than Mann’s native
`
`touch-based gestures. Id. As Patent Owner admits, the latter are easily recognizable
`
` 6
`
`

`

`IPR2021-00923
`U.S. Patent No. 8,194,924
`as the user interacting with the device. This is precisely why they draw more
`
`attention. Id. When a user seeks to initiate a recording on a device without the subject
`
`knowing, she should avoid actions that suggest a function has been initiated on the
`
`device. Id.
`
`To be sure, Mann’s touch-based gestures are less conspicuous than raising a
`
`camera to the user’s eye. Id. But they still depend on physical actions that a subject
`
`is likely to associate with the user interacting with and controlling the device. Id. As
`
`Patent Owner and its expert admit, the proposed no-touch gestures have no such
`
`association. Paper 12, 11; Ex. 2002, ¶ 49. Accordingly, contrary to Patent Owner’s
`
`argument, a POSITA would have understood that using no-touch gestures as
`
`proposed are less likely to draw the subject’s attention to the fact that the user is
`
`interacting with an electronic device. Ex. 1018, ¶ 5.
`
`2. Dr. Bederson alone has extensive experience relevant to the proposed
`combination
`The POR briefly argues that Dr. Bederson’s opinion should be given “no
`
`weight” because he “does not identify any experience or expertise in things of a
`
`‘covert nature[.]’” Paper 12, 11-12. While Dr. Bederson does not hold himself out
`
`as an expert on the narrowly defined field, “things of a covert nature,” he is
`
`unquestionably an expert in human-computer interaction (the relevant field
`
`identified in the governing POSITA definition for this proceeding (Paper 1, 5)), and
`
`he has extensive experience with the technical issues implicated by the proposed
`
` 7
`
`

`

`IPR2021-00923
`U.S. Patent No. 8,194,924
`combination. As set forth in ¶¶ 6-15 of Ex. 1003, Dr. Bederson is a leader in the field
`
`of human-computer interaction and has had extensive experience with the specific
`
`technical issues implicated by the proposed combination. He has been a Professor of
`
`Computer Science at the University of Maryland since 1998, is “a member and
`
`previous director of the Human-Computer Interaction Lab (‘HCIL’), the oldest and
`
`one of the best known Human-Computer Interaction research groups in the
`
`country[,]” and won numerous awards for his contributions to the field of human-
`
`computer interaction. Ex. 1003, ¶¶ 6, 13. His experience includes “the design and
`
`implementation of image sensing and image processing systems as well as software
`
`applications on mobile devices, including smart phones and PDAs”—directly
`
`relevant to the handheld devices at issue in the proposed combination. Id. at ¶ 7. And
`
`he has years of experience before the ’924 Patent priority date with imaging,
`
`including CMOS sensors—the type of camera sensors disclosed in Numazaki—and
`
`infrared transmitters and receivers—the type of illumination disclosed in Numazaki.
`
`Id. at ¶¶ 8-9.
`
`Mr. Occhiogrosso, on the other hand, holds himself out as an expert in
`
`telecommunications and IT, and identifies no specific experience that touches on
`
`any of the key aspects of the proposed combination. Ex. 2002, ¶¶ 6-14. Accordingly,
`
`to the extent the Board assigns experience-based weight to the parties’ respective
`
` 8
`
`

`

`IPR2021-00923
`U.S. Patent No. 8,194,924
`experts, Dr. Bederson’s directly applicable experience—that is the focus of his
`
`career—mandates his opinion be attributed more weight.
`
`3. Numazaki’s lighting unit is not visible to humans
`Patent Owner and its expert next argue that Numazaki’s lighting unit 101
`
`would “flicker[,] draw[ing] attention to the user’s interaction with Mann’s watch or
`
`PDA[.]” Paper 12, 12; Ex. 2002, ¶ 51. On cross examination, however, Mr.
`
`Occhiogrosso could not recall whether he had considered the type of illumination
`
`taught by Numazaki for this purpose. Ex. 1019, 44:24-45:21. Had he, Mr.
`
`Occhiogrosso would have realized that Numazaki’s expressly notes that “it is
`
`preferable to use . . . near infrared light which is invisible to the human eyes . . . so
`
`that the target human being will not sense the glare of the light.” Ex. 1005, 12:1-6.
`
`On cross examination, Mr. Occhiogrosso did not dispute that using infrared light
`
`would be invisible to the human eye. Ex. 1019, 46:14-47:4. Dr. Bederson confirms
`
`that using invisible infrared light as Numazaki expressly proposes would not create
`
`a flickering perceptible to the human eye. Ex. 1018, ¶ 6.
`
`4. Patent Owner concedes that physically touching Mann’s watch face
`obstructs its display
`Patent Owner next addresses the petition’s evidence that a POSITA would
`
`have been motivated to make the combination to avoid obstructing the display while
`
`the user physically interacts with it—an express downside to Mann’s native touch-
`
`based control. Paper 12, 13. Patent Owner notes that, even if an obstruction does
`
` 9
`
`

`

`IPR2021-00923
`U.S. Patent No. 8,194,924
`occur, “the obstruction is very brief.” Id. This argument is simply quibbling with
`
`degree. Namely, Patent Owner takes issue with how much this point motivates the
`
`combination, not whether it motivates the combination.
`
`5. Patent Owner conflates materially different types of gestures
`
`Patent Owner next argues that Mann expressly teaches away from using
`
`gestures at all because they allegedly “attract considerable attention.” Paper 12, 14-
`
`15. In support, the POR notes that Mann disparages “[c]urrent state-of-the-art
`
`photographic or video apparatus [that] causes a visual disturbance to others and
`
`attracts considerable attention on account of the gesture of bringing the camera up
`
`to the eye.” Id. (quoting Ex. 1004, 4-5). From the non-controversial teaching that
`
`bringing a camera up to one’s eye might raise awareness that you are taking a picture,
`
`Patent Owner concludes that Mann teaches away from any sort of gesture. Id.
`
`(“Mann’s inventions intentionally avoid gestures because they attract considerable
`
`attention. Given this, a POSITA would not seek to combine Mann with the gesture
`
`technology of Numazaki[.]”).
`
`Patent Owner is wrong. This argument ignores that Mann’s solution to the
`
`problem of drawing attention is to use less obvious gestures, such as touch-based
`
`finger strokes. Indeed, Mr. Occhiogrosso conceded on cross examination that Mann
`
`not only fails to disparage touch-based gestures, but actually recommends such
`
`gestures to interact with and control its devices. Ex. 1019, 44:3-23. Accordingly,
`
` 10
`
`

`

`IPR2021-00923
`U.S. Patent No. 8,194,924
`Mann does not disparage all gestures, as Patent Owner contends. It merely teaches
`
`that some gestures draw more attention than others. Indeed, this is a fundamental
`
`premise of the proposed grounds—Numazaki’s no-touch gestures draw less
`
`attention and are less associated with device control than Mann’s native touch-based
`
`finger strokes, which reveal the user is interacting with and controlling the device.
`
`6. Mann’s touch-based gestures would result in a user’s finger touching
`the camera, decreases its fidelity
`Patent Owner next disputes Petitioner’s premise that Mann’s touch-based
`
`gestures would result in a user’s finger touching the camera lens, “causing the
`
`fidelity of that camera to decrease over time due to grease and grime form the user’s
`
`finger.” Paper 12, 15 (quoting Paper 1, 22, 24). In support, Patent Owner’s expert
`
`does not dispute that touching the watch face over the user-facing camera would
`
`decrease the quality of the imaging, but rather opines that the user-facing camera
`
`would be left “untouched” because it is “separate” from and “above” the wristwatch
`
`display. Ex. 2002, ¶ 57; Paper 12, 16-17 (citing the same). He relies on the following
`
`annotated images from Mann, which he contends show that the digital clock face—
`
`on which a user performs touch-based strokes—is separate from the user-facing
`
`camera. Id. From this, Mr. Occhiogrosso concludes that a “user’s finger strokes are
`
`confined to the glass above the display unit (320) . . . leaving the glass above user-
`
`facing camera (350) untouched.” Id.
`
` 11
`
`

`

`IPR2021-00923
`U.S. Patent No. 8,194,924
`
`Paper 12, 16-17; Ex. 2002, ¶ 57.
`
`
`
` 12
`
`

`

`IPR2021-00923
`U.S. Patent No. 8,194,924
`Mr. Occhiogrosso critically ignores the practical realities of implementing
`
`touch-based gestures in the relatively small space such as that proposed by Mann.
`
`Indeed, a POSITA would have understood that swiping one’s finger with sufficient
`
`precision to convey a specific command is difficult enough given the size of a normal
`
`watch face. Ex. 1018, ¶¶ 7-8. But limiting the active touch-screen space, as Mann
`
`does, makes this task significantly more difficult. Id. That a user must target what
`
`would appear to cover less than half the available watch face real estate, means those
`
`gestures will often be off target and will often touch nearby portions of the watch
`
`face, including user-facing camera 350. Id. As Dr. Bederson explained in his original
`
`declaration, such inadvertent touches will “ultimately result in a loss of fidelity over
`
`time due to grease and grime from the user’s finger (or at least require regular
`
`cleanings to avoid such fidelity loss).” Ex. 1003, ¶ 48.
`
`A related problem with Mann’s native touch-based finger strokes is raised by
`
`Mr. Occhiogrosso’s testimony. He stresses that only a small area of an already small
`
`watch face is designated for touch-based finger strokes. Given the confined space, a
`
`POSITA would understand that performing such touch-based gestures with
`
`sufficient precision would require an elevated level of focus from the user. Ex. 1018,
`
`¶ 9. The user would not be able to casually swipe her finger in a general direction
`
`across the watch face, but must instead start and stop that finger swipe in precise
`
`locations within a very small portion of the watch face. Id. This too motivates the
`
` 13
`
`

`

`IPR2021-00923
`U.S. Patent No. 8,194,924
`proposed combination. With Numazaki’s no-touch gestures, the user’s finger can
`
`simply be swiped above the watch face in a particular direction. Id. No starting target
`
`or stopping target are required for the gesture to be correctly identified, which means
`
`much less focus is demanded of the user. With Mann’s goal of drawing minimal
`
`attention to the fact that the user is initiating a recording, simplifying the gesture
`
`process by allowing the user to casually swipe a finger with significantly less
`
`precision (and focus) than Mann’s native process would be significant. Id.
`
`7. Patent Owner fails to substantiate its suggestion that Numazaki’s
`imaging hardware is unsuitable for capturing the user during a
`recording and ignores that Numazaki’s approach actually improves
`image quality
`Patent Owner next argues that replacing Mann’s user-facing camera with
`
`Numazaki’s imaging components would make the device unsuitable for an optional
`
`feature described by Mann in which images of both the subject and user are captured.
`
`Paper 12, 18-20.1 (quoting Mann at 12 and arguing “it would no longer [be] possible
`
`for Mann’s mobile device (i.e., wristwatch or PDA) to generate the type of
`
`‘investigative journalism’ with ‘cut[s] back and forth between the two cameras to
`
`follow the natural flow of the conversation.’”). Patent Owner’s sole substantive
`
`support for this argument is Mr. Occhiogrosso’s opinion that Numazaki’s imaging
`
`components produce an image that is the difference between illuminated and un-
`
`
`1 The POR advances the same argument at 36-37 in the context of Ground 3.
`
` 14
`
`

`

`IPR2021-00923
`U.S. Patent No. 8,194,924
`illuminated images (a “reflected light image”), which he contends would be
`
`unsuitable for viewing. Paper 12, 18-19 (citing Ex. 2002, ¶ 60, which argues, without
`
`explanation, that “the average person would be confused upon viewing the “reflected
`
`light image”).
`
`As an initial matter, Patent Owner’s legal arguments fail. In re Gordon stands
`
`for the straightforward proposition that a combination is not obvious if it renders the
`
`prior art “inoperable for its intended purpose.” 733 F.2d 900, 902 (Fed. Cir. 1984).
`
`Patent Owner
`
`does
`
`not
`
`even
`
`attempt
`
`to
`
`establish
`
`inoperability.
`
`Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 581 F. App'x 859, 866 (Fed. Cir.
`
`2014) (noting the patent owner “presents no evidence that the combination would in
`
`fact be nonfunctional” and concluding, “because substantial evidence supports the
`
`Board's conclusion that the combination was at least functional, [the patent owner]
`
`misplaces its reliance on In re Gordon”). Patent Owner next cites In re Mouttet.
`
`Paper 12, 18. But, in that case, the Federal Circuit rejected the patent owner’s
`
`critique, finding the proposed change in circuitry “does not affect the overall
`
`principle of operation[.]” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). Patent
`
`Owner does not identify Mann’s “principle of operation” and it ignores that the both-
`
`sides recording feature is described by Mann as “optional.” Ex. 1004, 13.
`
`Turning to the substance of Patent Owner’s argument, it turns entirely on Mr.
`
`Occhiogrosso’s conclusory opinion that Numazaki’s reflected light image would be
`
` 15
`
`

`

`IPR2021-00923
`U.S. Patent No. 8,194,924
`unsuitable for viewing. Paper 12, 18-19 (citing Ex. 2002, ¶ 60). Mr. Occhiogrosso
`
`makes no attempt to explain why this image output would be unsuitable. He doesn’t
`
`distinguish it from the output of a single camera, nor does he explain what
`
`characteristics of the “reflected light image” make it less suitable for viewing.
`
`In fact, Numazaki’s structure actually improves imaging. A timing control
`
`unit is used to turn lighting unit 101 on (i.e., illuminating the target object) when the
`
`first camera unit is active and off when the second camera unit is active. Ex.1005,
`
`11:20-32. The result of this light control is the first camera unit captures an image
`
`of the target object illuminated by both natural light and the lighting unit 101 and
`
`the second camera unit captures an image of the target object illuminated by only
`
`natural light. Id. at 11:33-39. The difference between the two images—obtained by
`
`difference calculation unit 111—represents the “reflected light from the object
`
`resulting from the light emitted by the lighting unit 101.” Id. at 11:43-51.
`
`Accordingly, Numazaki’s unit 102 produces an image that precisely captures only
`
`the objects that are illuminated by lighting unit 101, excluding other image
`
`information that is illuminated only by ambient light. Dr. Bederson explains that
`
`Numazaki’s two-sensor structure improves upon a single sensor structure by
`
`ensuring that the produced image captures the illuminated gesture while excluding
`
`extraneous image information. Ex. 1018, ¶¶ 10-13. In the context of Mann’s two-
`
` 16
`
`

`

`IPR2021-00923
`U.S. Patent No. 8,194,924
`sided recording, this improved fidelity actually benefits the functionality, contrary
`
`to Mr. Occhiogrosso’s testimony. Id.
`
`8. No-touch gestures would be simpler and less conspicuous than touch-
`based gestures
`Citing Mr. Occhiogrosso, the POR argues no-touch gestures would be more
`
`cumbersome to use in conjunction with Mann’s wristwatch because “slight wrist
`
`motions” might cause gestures to be lost if the user-facing camera has a narrow field
`
`of view. Paper 12, 20-212 (citing Ex. 2002, ¶ 62, which explains no-touch gestures
`
`would be cumbersome “if the user-facing camera on the wristwatch has a narrow
`
`field of view”). But Mr. Occhiogrosso never explains why a POSITA would use
`
`such a narrow field of view. He simply manufactures a design flaw in the proposed
`
`combination and then uses that alleged flaw to rebut the combination.
`
`For good reason, a POSITA would not have implemented the user-facing
`
`camera with so narrow a field of view that slight wrist motions make the gesture
`
`detection ineffective. Ex. 1018, ¶ 14. Instead, the field of view would have been
`
`configured such that a user could inconspicuously swipe a finger across the screen
`
`in a predetermined direction. Id. So long as the finger passes over the face of the
`
`device, the gesture is recognized. Id. A POSITA would understand this is far simpler
`
`
`2 This argument applies only to the wristwatch embodiment and not the PDA
`embodiment.
`
` 17
`
`

`

`IPR2021-00923
`U.S. Patent No. 8,194,924
`and less conspicuous than Mann’s native touch-based gestures, which, as discussed
`
`above, require high precision and significant focus from the user. Id.
`
`9. Patent Owner mischaracterizes the petition’s motivation to combine
`At 22, the POR suggests “similarities in functionality and structure” between
`
`Mann and Numazaki are relevant only to the expectation of success, which it argues
`
`is insufficient to show obviousness. Paper 12, 21. Patent Owner ignores that KSR
`
`expressly teaches that similarities between references is directly relevant to
`
`obviousness: “[I]f a technique has been used to improve one device, and a person of
`
`ordinary skill in the art would recognize that it would improve similar devices in the
`
`same way, using the technique is obvious[.]” KSR Int'l Co. v. Teleflex Inc., 550 U.S.
`
`398, 417 (2007). Citing this specific authority, the petition established that a
`
`POSITA would have been motivated to modify Mann’s devices to realize the
`
`benefits of Numazaki’s no-touch gestures at least based on their similarities in both
`
`function and structure. Paper 1, 20-21. Additionally, these extensive similarities
`
`would have led to an expectation of success in combining the teachings. Id.
`
`10. A POSITA would not have found it difficult to incorporate Numazaki’s
`hardware in Mann’s wristwatch
`Without addressing Numazaki’s PDA embodiment, the POR cites Mr.
`
`Occhiogrosso’s argument that a POSITA would not have been motivated to
`
`incorporate Numazaki’s gesture-recognition hardware in Mann’s wristwatch due to
`
`size constraints, power requirements and heat dissipation issues. Paper 12, 21-23
`
` 18
`
`

`

`IPR2021-00923
`U.S. Patent No. 8,194,924
`(citing Ex. 2002, ¶¶ 63-64). Regarding size, Mr. Occhiogrosso argues it would be
`
`challenging to add Numazaki’s hardware in Mann’s wristwatch, but he fails to
`
`acknowledge that Numazaki itself expressly teaches a wristwatch that contains this
`
`same hardware. Paper 1, 16-17. Regarding power and heat, Mr. Occhiogrosso
`
`admitted on cross examination that he had not attempted to quantify the difference
`
`between Mann’s native camera and Numazaki’s gesture detection hardware and
`
`software. Ex. 1019, 51:12-15. Accordingly, his opinion is without foundation and
`
`should be accorded no weight.
`
`11. Petitioner’s products are irrelevant
`The POR next suggest that, if the combination of Mann and Numazaki was
`
`obvious, Petitioner (Apple) would have already implemented no-touch gestures in
`
`its own wristwatch products. Paper 12, 23. Patent Owner does not identify any
`
`specific products or a timeframe during which allegedly relevant products were sold.
`
`Further, Patent Owner does not suggest Petitioner has ever sold a surreptitious
`
`recording device like Mann’s such that there would have been a motivation to
`
`implement no-touch gestures. Accordingly, this argument is entirely irrelevant.
`
`C. Claim 2: Mann’s devices are mobile phones
`1. Patent Owner advances an unsupported definition of a mobile phone
`
`The POR argues “mobile phone” in Claim 2 must be a “handheld computing
`
`device capable of at least dialing telephone numbers and answering telephone calls”
`
`that must also contain an audio output like a built-in speaker or earphone jack so that
`
` 19
`
`

`

`IPR2021-00923
`U.S. Patent No. 8,194,924
`a mobile phone user can listen to a telephone call. Paper 12, 25. This construction is
`
`without support from the intrinsic record and should be rejected.
`
`In support, Patent Owner cites the ’924 Patent “generally” at 11:65-13:10.
`
`Critically, there is no teaching or suggestion in this portion of the ’924 Patent or
`
`elsewhere that a “mobile phone” in the context of the claimed invention must have
`
`voice call capabilities or the ability to establish or receive voice calls. In fact, the
`
`patent doesn’t discuss voice calls at all. Instead, the ’924 Patent describes data
`
`communications conducted using portable devices “such as a cell phone or
`
`whatever.” See Ex. 1001, 12:62-13:10 (describing images communicated over a
`
`wireless data connection). Consistent with the’924 Patent disclosure, Dr. Bederson
`
`describes a mobile phone as a portable computing device that includes a mobile
`
`communications system. Ex. 1003, ¶ 51. This is the definition that was applied in
`
`the petition. Paper 1, 42-43. Because it is the only proposed construction that aligns
`
`with the intrinsic record, it should control.
`
`2. Mann’s explicit disclosure characterizes its wristwatch as a mobile
`telephone
`Even assuming telephone functionality were imported into the claims, Mann
`
`expressly teaches it. Mann expressly describes its device as a “wristwatch
`
`videotelepho