IPR2021-00923
`Patent No. 8,194,924
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`APPLE, INC., LG ELECTRONICS, INC.,
`LG ELECTRONICS U.S.A., INC., and GOOGLE LLC
`
`Petitioner,
`v.
`GESTURE TECHNOLOGY PARTNERS, LLC
`
`Patent Owner
`__________________
`Inter Partes Review No. IPR2021-009231
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY IN THE
`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
`
`WILLIAMS SIMONS & LANDIS PLLC
`
`
`1IPR2022-00093 (LG Electronics, Inc. and LG Electronics U.S.A., Inc.) and
`IPR2022-00361 (Google LLC) have been joined with this proceeding.
`
`
`
`
`

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`IPR2021-00923
`Patent No. 8,194,924
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`
`TABLE OF CONTENTS
`
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`GROUND 1: MANN AND NUMAZAKI DO NOT RENDER CLAIMS
`1-6, 11, AND 14 OBVIOUS. .......................................................................... 1
`A. Mann and Numazaki do not teach or suggest claim element [1(e)]. ..... 1
`B.
`A POSITA would not have been motivated to combine Mann and
`Numazaki. .............................................................................................. 2
`1. No-touch gestures do not improve Mann’s covert nature. .............. 2
`2. Mr. Occhiogrosso has extensive experience relevant to the
`proposed combination and his opinion should not be
`discounted........................................................................................ 4
`3. Mann’s watch face display remains obstructed even after
`Petitioner’s combination. ................................................................ 5
`4. Mann teaches away from using no-touch gestures because
`they are more likely to be noticed by the subject than touch-
`based gestures. ................................................................................. 6
`5. Mann’s user-facing camera will suffer a loss in fidelity even
`after Petitioner’s combination. ........................................................ 7
`6. Petitioner’s proposed combination renders Mann inoperable
`for its intended purpose and/or changes Mann’s principle of
`operation. ......................................................................................... 8
`7. Petitioner provides no basis for why no-touch gestures would
`allegedly be simpler and less conspicuous than touch-based
`gestures. .........................................................................................11
`Petitioner has not established that Mann is analogous art. .................12
`C.
`Claim 2: Mann’s devices are not mobile phones. ..............................13
`D.
`III. GROUND 2: MANN, NUMAZAKI, AND AMIR DO NOT RENDER
`CLAIMS 7, 8, 10, 12, AND 13 OBVIOUS...................................................15
`A.
`Amir is non-analogous art and cannot be cited in any obviousness
`rejection.. .............................................................................................15
`There is no motivation to combine Mann, Numazaki, and Amir. .......15
`B.
`IV. GROUND 3: Mann, NUMAZAKI, AND AVIV DO NOT RENDER
`CLAIMS 6 and 9 OBVIOUS.........................................................................17
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`IPR2021-00923
`IPR2021-00923
`Patent No. 8,194,924
`Patent No. 8,194,924
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`CONCLUSION ..............................................................................................17
`CONCLUSION1... ceecssecssecsseeeseeeseesseeeseeesseseseseseecseecsaessaessseesseasseasseaeegs 17
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`
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`V.
`V.
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`ii
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`TABLE OF AUTHORITIES
`
`IPR2021-00923
`Patent No. 8,194,924
`
`
`
`Cases
`Airbus S.A.S. v. Firepass Corp.,
` 941 F.3d 1374 (Fed. Cir. 2019) ............................................................................13
`
`Arlington Indus., Inc. v. Bridgeport Fittings, Inc.,
` 581 F. App’x 859 (Fed. Cir. 2014) .......................................................................10
`
`In re Bigio,
` 381 F.3d 1320 (Fed. Cir. 2004) ............................................................................13
`
`In re Buchner,
` 929 F.2d 660 (Fed. Cir. 1991) ..............................................................................14
`
`In re Klein,
` 647 F.3d 1343 (Fed. Cir. 2011) ..................................................................... 15, 17
`
`In re Mouttet,
` 686 F.3d 1322 (Fed. Cir. 2012) ............................................................................10
`
`
`
`iii
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`

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`IPR2021-00923
`Patent No. 8,194,924
`
`
`INTRODUCTION
`
`Gesture Technology Partners, LLC (“Patent Owner”) respectfully submits this
`
`
`I.
`
`Sur-Reply to Petitioner’s Reply (“Reply”) in Inter Partes Review No. IPR2021-
`
`00923 of U.S. Patent No. 8,194,924 (the “’924 Patent”).
`
`II. GROUND 1: MANN AND NUMAZAKI DO NOT RENDER CLAIMS
`1-6, 11, AND 14 OBVIOUS.
`
`
`
`A. Mann and Numazaki do not teach or suggest claim element [1(e)].
`
`In the Reply, Petitioner correctly notes that “the claim does require that the
`
`control function be based on the output of the first camera” and that “Numazaki’s
`
`feature data generation unit 103 determines gestures, pointing, etc.” Reply at 4
`
`(internal citations omitted). But Numazaki’s “feature data generation unit” is never
`
`given access to the output (i.e., image) of what Petitioner alleges is Numazaki’s first
`
`camera (i.e., Numazaki’s “photo-detection unit 109” or “photo-detection unit 110”).
`
`See Ex. 1005, 10:53-58, 11:59-61, Fig. 2. Instead, Numazaki’s “feature data
`
`generation unit” is only given access to a “reflected light image,” which is the output
`
`of Numazaki’s “difference calculation unit,” not the output of photo-detection unit
`
`109 or 110. See id. Further, the “reflected light image” undergoes various
`
`transformations including amplification and analog-to-digital conversion before it
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`becomes an input to Numazaki’s “feature data generation unit.” See id. at 11:60-66,
`
`
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`1
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`IPR2021-00923
`Patent No. 8,194,924
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`Fig. 2. Thus, Numazaki does not teach “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)].
`
`Petitioner concedes Mann does not teach this limitation. Paper 1, Petition, pp.
`
`38-42. Accordingly, the combination of Mann and Numazaki does not teach or
`
`suggest claim element [1(e)], and thus does not render claim 1 obvious.
`
`B. A POSITA would not have been motivated to combine Mann and
`Numazaki.
`
`1.
`
`The Board agreed with Patent Owner that Petitioner failed to show that no-
`
`No-touch gestures do not improve Mann’s covert nature.
`
`touch gestures would draw less attention than physically interacting with a watch
`
`interface or PDA. See Paper 10 at 20. In the Reply, Petitioner argues “when the
`
`user physically interacts with the watch or PDA, it risks the subject recognizing that
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`the user has in fact interacted with the device and may have initiated some process
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`within the device (e.g., a recording). Id. This is one of the key reasons a POSITA
`
`would have understood [Numazaki’s] no-touch gestures draw less attention than
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`Mann’s native touch-based gestures.” Reply at 6 (emphasis added). Petitioner is
`
`incorrect.
`
`Mann discloses the wristwatch “truly looks like an ordinary wristwatch . . .
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`because it is in fact a wristwatch, among other things.” Ex. 1004, p. 17. Petitioner’s
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`
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`2
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`Patent No. 8,194,924
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`argument requires the subject to be aware that Mann’s wristwatch has recording
`
`capabilities. Petitioner fails to explain, however, why the subject would think an
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`“ordinary[-looking] wristwatch” has video recording capabilities. See Reply at 5-7.
`
`Petitioner also fails to explain why physically interacting with an “ordinary[-
`
`looking] wristwatch” would risk drawing any attention at all. See id. As discussed
`
`before, physically interacting with wristwatches was well-known and expected, and
`
`thus unlikely to draw attention. See Ex. 2002, ¶49. Moreover, Dr. Bederson’s
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`supplemental declaration does not cure the deficiencies in his first declaration. He
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`provides no basis for why “a POSITA would have understood that no-touch gestures
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`as proposed are less likely to draw the subject’s attention to the fact that the user is
`
`interacting with an electronic device.” See Ex. 1018 at ¶5 (emphasis in original).
`
`Petitioner’s arguments are even less persuasive for the PDA. Mann discloses
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`“[o]ne aspect of the invention allows the user to take notes with pen and paper (or
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`pen and screen) and continuously record video together with the written notes.” Ex.
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`1004, p. 11 (emphasis added). “A video camera 110 captures a view of a person
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`standing in front of the user of the PDA . . . while the user is writing or pertending
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`[sic] to write on the PDA’s screen 130 with pen 140.” Id. at 14-15 (emphasis added).
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`So Mann intends for the user to be in physical contact with the PDA while the subject
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`is being recorded. Petitioner fails to adequately explain how the addition of no-touch
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`gestures in this PDA context, where the user is already literally writing on the PDA,
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`will reduce the risk of “the subject recognizing that the user has in fact interacted
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`with the device.” Reply at 6.
`
`For these reasons, Petitioner has failed to explain how adding Numazaki’s no-
`
`touch gesture recognition to Mann’s wristwatch or PDA improves Mann’s covert
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`nature. It does not. There is no motivation to combine Mann and Numazaki.
`
`2. Mr. Occhiogrosso has extensive experience relevant to the
`proposed combination and his opinion should not be discounted.
`
`
`The institution decision correctly noted that Dr. Bederson does not have any
`
`experience or expertise specific to “things of a ‘covert nature.”2 See Paper 10 at 20.
`
`In the Reply, Petitioner sidesteps the issue by asking the Board to afford more weight
`
`to Dr. Bederson’s opinions than the opinions of Mr. Occhiogrosso. See Reply at 8-
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`9 (“to the extent the Board assigns experienced-based weight to the parties’
`
`respective experts, Dr. Bederson’s directly applicable experience—that is the focus
`
`of his career—mandates his opinion be attributed more weight.”). Petitioner’s
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`request to the Board is based on a misrepresentation of Mr. Occhiogrosso’s
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`experience.
`
`Petitioner alleges that “Mr. Occhiogrosso, on the other hand, holds himself
`
`out as an expert in telecommunications and IT, and identifies no specific experience
`
`
`2 Petitioner conceded this point in the Reply. See Reply at 7 (“While Dr. Bederson
`does not hold himself out as an expert on the narrowly defined field, ‘things of a
`covert nature,’”).
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`4
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`IPR2021-00923
`Patent No. 8,194,924
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`that touches on any of the key aspects of the proposed combination.” Reply at 8.
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`Dr. Bederson’s opinion should not be attributed more weight than the opinion of Mr.
`
`Occhiogrosso. The truth of the matter, however, is that Mr. Occhiogrosso has
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`considerable experience in the technical areas of at least cameras, video analytics
`
`using image processing, sensors for gesture control, hand swipe/ hand geometry
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`scanners that do not require the user to touch any surfaces, image processing and
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`hand gesture recognition technology to support interpretation of users employing
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`American Sign Language (ASL), and cellular systems. See Ex. 2002, ¶¶9-13. This
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`knowledge is directly related to the claimed invention and the cited prior art
`
`references. Accordingly, Petitioner’s request to afford more weight to Dr.
`
`Bederson’s opinions should be denied.
`
`3. Mann’s watch face display remains obstructed even after
`Petitioner’s combination.
`
`
`In the Reply, Petitioner argues “Patent Owner concedes that physically
`
`touching Mann’s watch face obstructs its display” and “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.” Reply at 9. But Petitioner’s proposed combination does not actually
`
`eliminate the alleged obstruction problem. Petitioner’s proposed combination
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`involves replacing Mann’s touch-based gestures that trigger command functions
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`(e.g., “stop recording,” “kill all processes and halt the processor,” “wake up the
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`system from sleep mode,” etc.) with Numazaki’s no-touch gestures. See Paper 1, pp.
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`38-41; Ex. 1004, p. 17. But Mann also discloses “telephone numbers can be easily
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`entered into the [wristwatch by way of the clock face], and similarly an alphabet 490
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`. . . The data entered by way of the clock face menu is typically combined with the
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`video recording made from the scene . . . the clock face menu is sufficient for
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`entering a department store manager’s name, which may be appended to the video
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`file header.” Ex. 1004, p. 18 (emphasis added), Fig. 4. Thus, even if Mann’s touch-
`
`based gestures that trigger command functions are replaced with Numazaki’s non-
`
`touch gestures, Mann discloses that the user still makes physical contact with the
`
`watch face for data entry (e.g., “entering a department store manager’s name”). See
`
`id. Accordingly, “obstructing the display while the user physically interacts with it”
`
`remains a problem even after Petitioner’s combination. Because the problem is not
`
`actually eliminated following Petitioner’s combination, the elimination of this
`
`problem cannot serve as a motivation to combine the references.
`
`4. Mann teaches away from using no-touch gestures because they
`are more likely to be noticed by the subject than touch-based
`gestures.
`
`
`The institution decision correctly noted that the Petition failed to provide any
`
`reasoning for why no-touch gestures would allegedly be less obvious than touch-
`
`based gestures. See Paper 10 at 20. In the Reply, Petitioner argues “Mann’s solution
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`6
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`Patent No. 8,194,924
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`to the problem of drawing attention is to use less obvious gestures . . . Mann does
`
`not disparage all gestures . . . [Mann] 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.” Reply at 10-
`
`11. The Reply, however, does not identify any additional evidence to support
`
`Petitioner’s argument that no-touch gestures would draw less attention than touch-
`
`based gestures. See Reply at 10-11. Patent Owner maintains that performing
`
`gestures in the air above the watch or PDA, especially at the effective filing date of
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`the ’924 Patent, would be more obvious (i.e., greater risk of being noticed by the
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`subject) than physically touching the watch or PDA. Ex. 2002, ¶49. Thus, Mann
`
`teaches away from Petitioner’s proposed combination.
`
`5. Mann’s user-facing camera will suffer a loss in fidelity even after
`Petitioner’s combination.
`
`
`Petitioner continues to argue that “Mann’s touch-based gestures would result
`
`in a user’s finger touching the camera,” which would “ultimately result in a loss of
`
`fidelity over time due to grease and grime from the user’s fingers.” Reply at 11 and
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`13. Petitioner’s proposed combination involves replacing Mann’s touch-based
`
`gestures that trigger command functions with Numazaki’s no-touch gestures. See
`
`Paper 1, pp. 38-41; Ex. 1004, p. 17. But even if Mann’s touch-based gestures that
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`IPR2021-00923
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`trigger command functions are replaced with Numazaki’s no-touch gestures, Mann
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`discloses that the user still makes physical contact with the watch face for data entry
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`(e.g., “entering a department store manager’s name”). See Ex. 1004, p. 18, Fig. 4.
`
`As admitted by Petitioner, “[t]hat 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
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`camera 350.” Reply at 13 (citing Ex. 1018, ¶¶ 7-8). Accordingly, “a loss of [the
`
`camera’s] fidelity over time” remains a problem even after Petitioner’s combination.
`
`Because the problem is not actually eliminated following Petitioner’s combination,
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`the elimination of this problem cannot serve as a motivation to combine the
`
`references.
`
`6.
`
`Petitioner’s proposed combination renders Mann inoperable for
`its intended purpose and/or changes Mann’s principle of
`operation.
`
`
`Petitioner argues “the substance of Patent Owner’s argument [] turns entirely
`
`on Mr. Occhiogrosso’s conclusory opinion that Numazaki’s reflected light image
`
`would be unsuitable for viewing . . . 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.” Reply at 15-16. Petitioner clearly does
`
`not understand the teachings of Numazaki and disregards its own admissions.
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`8
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`Patent No. 8,194,924
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`Petitioner correctly notes that Numazaki’s “reflected light image” represents
`
`the “reflected light from the object resulting from the light emitted by the lighting
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`unit 101” and that Numazaki’s “reflected light image” is “an image that precisely
`
`captures only the objects that are illuminated by lighting unit 101, excluding other
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`image information that is illuminated only by ambient light.” Reply at 16 (emphasis
`
`added). Earlier in its Reply, Petitioner admits that “Numazaki’s lighting unit is not
`
`visible to humans” and “lighting unit 101 . . . [emits] near infrared light which is
`
`invisible to human eyes.” Reply at 9 (emphasis added). Thus, based on Petitioner’s
`
`own statements, Numazaki’s “reflected light image” consists solely of reflected near
`
`infrared light which is invisible to human eyes. Yet Petitioner now contends that
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`Mr. Occhiogrosso is incorrect in his opinion that Numazaki’s “reflected light image”
`
`is “unsuitable for viewing” by a human.
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`Petitioner also argues that “Patent Owner does not even attempt to establish
`
`inoperability.” Reply at 15. This is simply not true. In the Patent Owner Response,
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`Patent Owner explained “it would no longer [be] possible for Mann’s mobile device
`
`(i.e., wristwatch or PDA) to generate the type of ‘investigative journalism’ with
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`‘cut[s] back and forth between the two cameras to follow the natural flow of the
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`conversation.’ Ex. 1004, p. 12. This strikes at the very goal of Mann’s invention to
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`capture ‘face-to-face conversation[s] between two individuals’ in ‘a natural manner
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`with minimal intervention or disturbance.’” Paper 12 at 20.
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`9
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`Arlington Indus., Inc. v. Bridgeport Fittings, Inc. is easily distinguishable
`
`from the present case. Unlike the present case, the Patent Owner in Arlington
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`provided no evidence that the proposed combination rendered the cited art
`
`inoperable for its intended purpose. See Arlington Indus., Inc. v. Bridgeport Fittings,
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`Inc., 581 F. App’x 859, 866 (Fed. Cir. 2014). Thus, Arlington has no bearing on the
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`present situation where the argument is supported by significant evidence.
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`Petitioner also argues that “Patent Owner does not identify Mann’s ‘principle
`
`of operation.’” Reply at 15. Again, this is not true.3 In the Patent Owner Response,
`
`Patent Owner explained
`
`Mann discloses a mobile device (i.e., PDA or wristwatch) having a
`‘camera [that] points forward” for recording a subject (e.g., corrupt
`official). Ex. 1004, p. 16. Mann also discloses the mobile device (i.e.,
`PDA or wristwatch) has a ‘second camera . . . to record [the user]
`himself/herself.’ [] Ex. 1004, p. 15. As explained by Mann, ‘[i]n this
`way, both sides of the conversation may be simultaneously recorded by
`the two cameras, so that the resulting recordings could be edited
`[together] later, so that there could, for example, be a cut back and forth
`between the two cameras to follow the natural flow of the conversation.
`
`3 Petitioner’s argument regarding the Federal Circuit decision In re Mouttet, 686
`F.3d 1322 (Fed. Cir. 2012) is based on Petitioner’s inaccurate assertion that “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.’” See Reply at 15. Given
`that Patent Owner identified the principle of operation of Mann and addressed the
`reference in its entirety, Petitioner’s arguments regarding In re Mouttet should be
`disregarded.
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`Such a recording might, for example, be used for an investigative
`journalism story.’
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`Paper 12 at 18-19 (emphasis in original). Patent Owner further explained “[t]his is
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`unsurprising because Mann describes his invention as a ‘novel means and apparatus
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`for personal documentary photography and videography.’ [Ex. 1004], p. 3; see also
`
`id., p. 4 (‘In photography (and in movie and video production), it is often desirable
`
`to capture events in a natural manner with minimal intervention or disturbance. In
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`the present invention, the scenario to be considered is that of face-to-face
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`conversation between two individuals.’).” Paper 12 at 19. So Mann’s principle of
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`operation includes the use of two cameras on a mobile device for recording both
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`sides of the conversation.
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`For the above reasons, there is no motivation to combine Mann and Numazaki.
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`7.
`
`Petitioner provides no basis for why no-touch gestures would
`allegedly be simpler and less conspicuous than touch-based
`gestures.
`Petitioner argues no-touch gestures would be “simpler and less conspicuous
`
`than touch-based gestures.” Reply at 17-18. Petitioner cites to no evidence from
`
`Mann or Numazaki. See id. Petitioner cites only to paragraph 14 of Dr. Bederson’s
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`supplemental declaration. See id. (citing Ex. 1018, ¶14). But his declaration cites
`
`no evidence from Mann or Numazaki, and he provides no analysis, let alone
`
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`11
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`IPR2021-00923
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`supporting evidence, for his naked opinion that no-touch gestures are “far simpler
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`and less conspicuous than Mann’s native touch-based gestures.” See Ex. 1018, ¶14.
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`C.
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`Petitioner has not established that Mann is analogous art.
`
`Petitioner contends that Mann’s field of endeavor is “a portable camera
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`system that may be controlled by human gesture input.” Reply at 24. But Mann
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`discloses “[i]t is an object of this invention to provide a method of positioning a
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`camera to take a picture or video of a subject without the subject’s knowledge.” Ex.
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`1004, p. 6. A benefit of Mann’s invention “is to provide personal safety, and to
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`ensure accountability to those who might otherwise escape accountability. These
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`benefits are especially useful in a totalitarian regime.” Ex. 1004, p. 19. Mann
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`describes the invention as “[a] novel means and apparatus for personal documentary
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`photography and videography. . . The camera system integrates the process of
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`making a personal handwritten diary or the like, with the capture of video, from an
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`optimal point of vantage and camera angle. . . Video of a subject such as an official
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`behind a counter may be captured by a customer or patron of an establishment, in
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`such a manner that the official cannot readily determine whether or not video is being
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`captured with the handwritten notes or annotations.” Ex. 1004, Abstract. The title
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`of Mann is “Personal Imagining System with Viewfinder and Annotation Means.”
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`Ex. 1004, Title. Independent claim 13 is directed towards “[a] wristwatch video
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`conferencing system.” Ex. 1004, p. 23. Petitioner’s reliance on a single generic
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`12
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`statement (i.e., “a portable camera system that may be controlled by human gesture
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`input”) to identify Mann’s field of endeavor, rather than all of the embodiments and
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`claims, is improper. See Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1380-81
`
`(Fed. Cir. 2019) (the court finding the PTAB’s reliance on the title, specification,
`
`and claims of a prior art reference to determine the reference’s field of endeavor
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`reasonable); see also In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“This test
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`for analogous art requires the PTO to determine the appropriate field of endeavor by
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`reference to explanations of the invention's subject matter in the patent application,
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`including the embodiments, function, and structure of the claimed invention.”).
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`Petitioner has not established Mann’s proper field of endeavor and thus has not
`
`established that Mann is analogous art. Accordingly, Mann cannot be cited in any
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`obviousness rejections.
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`D. Claim 2: Mann’s devices are not mobile phones.
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`In reply, Petitioner takes the remarkable position that a “mobile phone” does
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`not need to be capable of making and receiving telephone calls. See Reply at 20.
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`Petitioner claims that Patent Owner’s position “is without support from the intrinsic
`
`record and should be rejected.” See id. But the plain language of the claim is
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`intrinsic support—“mobile” modifies the word “phone” in the term “mobile phone.”
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`While it is true the ’924 Patent “doesn’t discuss voice calls” (Reply at 20), it does
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`not need to. It is not surprising that the ’924 Patent does not describe phones making
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`Patent No. 8,194,924
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`and receiving telephone calls because any layperson would have that understanding.
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`This is especially true because the ’924 Patent repeatedly discloses a cellphone as
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`an example of a mobile phone. See generally Ex. 1001, 11:65-13:10; Ex. 2002, ¶70.
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`Moreover, “[t]he specification need not disclose what is well known in the art.” In
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`re Buchner, 929 F.2d 660, 661 (Fed. Cir. 1991).
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`Petitioner argues that “Mann expressly describes its device as a ‘wristwatch
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`videotelephone.’” Reply at 20. A POSITA, however, would not interpret Mann’s
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`“wristwatch videotelephone” to mean that Mann’s wristwatch can dial telephone
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`numbers or answer telephone calls. See Ex. 2002, ¶¶ 73-74. A POSITA would also
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`not interpret Mann’s “wristwatch videophone” to have an audio output because the
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`audio output would only draw attention to the user, which is the opposite of what
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`Mann is trying to achieve. See Ex. 2002, ¶ 72; Paper 1, p. 22 (“Mann expressly
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`teaches that remaining covert and avoiding attention from the subject are goals of
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`[Mann’s] invention.”). It is telling that neither Petitioner nor Petitioner’s expert
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`provides a rebuttal to Patent Owner’s position that an audio output would
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`compromise the covert nature of Mann’s wristwatch. See Reply at 19-21.
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`Accordingly, Mann’s “wristwatch videotelephone” is not a “mobile phone” as
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`required by claim 2.
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`IPR2021-00923
`Patent No. 8,194,924
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`III. GROUND 2: MANN, NUMAZAKI, AND AMIR DO NOT RENDER
`CLAIMS 7, 8, 10, 12, AND 13 OBVIOUS.
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`A. Amir is non-analogous art and cannot be cited in any obviousness
`rejection.
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`In the Reply, Petitioner argues that (1) the field of endeavor of the ’924 Patent
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`is “a portable camera system that may be controlled by human gesture input,” and
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`(2) the field of endeavor of Amir is “a camera system that controls the operation of
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`the device based on captured image information.” Reply at 24. In other words,
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`Petitioner admits that Amir does not belong to the same field of endeavor as the ’924
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`Patent. This makes Amir non-analogous art and thus Amir cannot be cited in any
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`obviousness rejection. “A reference qualifies as prior art for an obviousness
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`determination only when it is analogous to the claimed invention.” In re Klein, 647
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`F.3d 1343, 1348 (Fed. Cir. 2011) (emphasis added).
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`B.
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`There is no motivation to combine Mann, Numazaki, and Amir.
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`In the Reply, Petitioner argues “Numazaki also uses a two-sensor structure in
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`a wristwatch device, which establishes that a POSITA would have been capable of
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`doing (and motivated to do) the same with Amir’s two-camera structure.” Reply at
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`21. This is misleading. Again, to meet dependent claims 7, 8, 10, 12, and 13, which
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`depend from claim 1, Petitioner has (1) replaced Mann’s user-facing camera (i.e.,
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`first camera) with Numazaki’s gesture-detection hardware (i.e., two photo-detection
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`units, reflected light extraction unit, feature data generation unit, lighting unit, etc.),
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`IPR2021-00923
`Patent No. 8,194,924
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`and (2) replaced Mann’s covert camera (i.e. second camera) with Amir’s pupil-
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`detection system and process (i.e., digital data processing apparatus 102, camera
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`104, light source 106, and output device 108). In other words, to meet claims 7, 8,
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`10, 12, and 13, it is necessary for Mann’s wristwatch to have four cameras (i.e.,
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`Numazaki’s two photo-detection units, Amir’s camera 104, and Amir’s output device
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`108). Even if Numazaki teaches that “a POSITA would have been capable” of
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`placing “a two-sensor structure in a wristwatch device,” Petitioner fails to explain
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`how this teaching extends to four cameras in a single wristwatch, as required by
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`Petitioner’s combinations.
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`Petitioner argues “Amir’s functionality turns on identifying that a subject’s
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`eyes are open . . . there is no separate requirement that the subject look directly at
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`the camera.” Reply at 22. Even if this is true, Mann captures images of the subject
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`“from underneath the subject’s face.” Ex. 1004, p. 12. There is no indication that
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`Amir’s algorithms would be able to perform pupil detection on images taken from
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`the low covert angle in Mann.
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`Petitioner argues “Amir’s functionality ensures that whatever image is
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`ultimately captured and transmitted will be useful for subject identification at least
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`because it ensures the subject’s eyes are open. . . This is especially helpful in quick
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`subject identification.” Reply at 22-23. But neither Petitioner nor Petitioner’s expert
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`IPR2021-00923
`Patent No. 8,194,924
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`provides an explanation as to how “open eyes” improve or accelerate “subject
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`identification.”
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`Accordingly, there is no motivation to combine Mann and Numazaki with
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`Amir.
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`IV. GROUND 3: MANN, NUMAZAKI, AND AVIV DO NOT RENDER
`CLAIMS 6 AND 9 OBVIOUS
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`In the Reply, Petitioner argues that (1) the field of endeavor of the ’924 Patent
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`is “a portable camera system that may be controlled by human gesture input,” and
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`(2) the field of endeavor of Aviv is “a camera system that controls the operation of
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`the device based on captured image information.” Reply at 24. In other words,
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`Petitioner admits that Aviv does not belong to the same field of endeavor as the ’924
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`Patent. This makes Aviv non-analogous art and thus Aviv cannot be cited in any
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`obviousness rejection. See In re Klein at 1348.
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`V. CONCLUSION
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`For the foregoing reasons, Petitioner’s asserted grounds do not render any of
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`the Challenged Claims unpatentable.
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`CERTIFICATE OF COMPLIANCE
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`IPR2021-00923
`Patent No. 8,194,924
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`Pursuant to 37 C.F.R. § 42.24(d), I hereby certify that the foregoing Patent
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`Owner’s Sur-Reply contains 3,969 words as measured by the word processing
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`software used to prepare the document, excluding the cover page, signature block,
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`and portions exempted under 37 C.F.R. § 42.24(a) or (b).
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`DATED:
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`Respectfully Submitted,
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`By: /Todd E. Landis/
`Todd E. Landis
`Registration No. 44,200
`Counsel for Patent Owner
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`July 6, 2022
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`CERTIFICATE OF SERVICE
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`IPR2021-00923
`Patent No. 8,194,924
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on July 6,
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`2022, the foregoing document was served on counsel of record for Petitioner by
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`filing this document through the End-to-End System, as well as via electronic mail
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`to counsel of record for Petitioner (and jointed Petitioners) at the following
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`addresses:
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`Adam P. Seitz (Adam.Seitz@eriseip.com)
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`Paul R. Hart (Paul.Hart@eriseip.com)
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`Matthew D. Satchwell (Matthew.satchwell@dlapiper.com)
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`Gianni Minutoli (gianni