`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
`PURSUANT TO 37 C.F.R. § 42.120
`
`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)
`327 Congress Avenue, Suite 490
`Austin, TX 78701
`WILLIAMS SIMONS & LANDIS PLLC
`
`
`
`
`
`IPR2021-00923
`Patent 8,194,924
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 2
`II.
`III. THE PETITION SHOULD BE DENIED BECAUSE IT DOES NOT
`ESTABLISH A REASONABLE LIKELIHOOD OF SUCCESS ON ANY
`CHALLENGED CLAIM ................................................................................ 2
`A. The ’924 Patent ....................................................................................... 2
`B. Level of Ordinary Skill in the Art .......................................................... 5
`C. Claim Construction ................................................................................. 5
`D. Ground 1 – Mann and Numazaki Do Not Render Claims 1-6, 11,
`and 14 Obvious ....................................................................................... 5
`1.
`Independent Claim 1 ................................................................... 6
`[1(e)] wherein the computer is adapted to perform
`i.
`a control function of the handheld device based
`on at least one of the first camera output and the
`second camera output ....................................................... 6
`
`Dependent Claim 2....................................................................15
`2.
`Dependent Claim 3....................................................................15
`3.
`Dependent Claim 4....................................................................16
`4.
`Dependent Claim 5....................................................................16
`5.
`Dependent Claim 6....................................................................16
`6.
`Dependent Claim 11 .................................................................17
`7.
`Dependent Claim 14 .................................................................17
`8.
`E. Ground 2 – The Combination of Mann, Numazaki, and Amir Does
`Not Render Claims 7, 8, 10, 12, and 13 obvious .................................. 17
`F. Ground 3 – The Combination of Mann, Numazaki, and Aviv Does
`Not Render Claims 6 and 9 obvious ..................................................... 18
`
`i
`
`
`
`IPR2021-00923
`Patent 8,194,924
`
`
`IV. THE PETITION SHOULD BE DENIED BECAUSE THE BOARD DOES
`NOT HAVE JURISDICTION OVER EXPIRED PATENTS ......................18
`CONCLUSION ..............................................................................................19
`
`
`
`V.
`
`
`
`
`
`
`ii
`
`
`
`IPR2021-00923
`Patent 8,194,924
`
`I.
`
`INTRODUCTION
`
`Gesture Technology Partners, LLC (“GTP” or “Patent Owner”) respectfully
`
`submits this Preliminary Response (the “Response”) to Apple Inc.’s (“Apple” or
`
`“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”).
`
`Institution should be denied because the Petition fails to demonstrate a
`
`reasonable likelihood that any challenged claim of the ’924 Patent is unpatentable.
`
`As detailed herein, the combination of references applied by the Petition against the
`
`independent claim of the ’924 Patent has numerous glaring deficiencies, including
`
`failing to teach or suggest at least the following limitation: [1(e)]1 wherein the
`
`computer is adapted to perform a control function of the handheld device based on
`
`at least one of the first camera output and the second camera output.
`
`In addition, the Petition should be denied because the Board does not have
`
`jurisdiction over expired patents.
`
`For these reasons, institution should be denied.
`
`
`1 For convenience of reference only, this Preliminary Response adopts the claim
`
`element numbering presented in the Petition.
`
`1
`
`
`
`
`II.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Patent Owner requests that the Board deny institution of the Petition with
`
`IPR2021-00923
`Patent 8,194,924
`
`respect to all challenged claims and all asserted grounds. A full statement of the
`
`reasons for the relief requested is set forth in Sections III and IV of this Response.
`
`III. THE PETITION SHOULD BE DENIED BECAUSE IT DOES NOT
`ESTABLISH A REASONABLE LIKELIHOOD OF SUCCESS ON ANY
`CHALLENGED CLAIM
`
`As shown below, the Petition fails to demonstrate a reasonable likelihood that
`
`Petitioner would prevail with respect to any claim of the ’924 Patent. The Petition
`
`challenges claims 1-14 of the ’924 Patent (the “Challenged Claims”). Pet. at 1. As
`
`detailed herein, each proposed Ground fails to disclose key limitations of each
`
`Challenged Claim. Trial should not be instituted.
`
`A. The ’924 Patent
`
`The ’924 Patent, which is entitled “Camera Based Sensing in Handheld,
`
`Mobile, Gaming or Other Devices,” claims priority to U.S. Provisional Application
`
`No. 60/142,777, filed on July 8, 1999. See Ex. 1001.
`
`The ’924 Patent is directed towards methods and apparatuses “to enable rapid
`
`TV camera and computer-based sensing in many practical applications, including,
`
`but not limited to, handheld devices, cars, and video games.” Ex. 1001, Abstract.
`
`The claims of the ’924 Patent relate in general to “input devices for computers,
`
`particularly, but not necessarily, intended for use with 3-D graphically intensive
`
` 2
`
`
`
`
`
`
`activities, and operating by optically sensing a human input to a display screen or
`
`IPR2021-00923
`Patent 8,194,924
`
`other object and/or the sensing of human positions or orientations.” Id., 2:7-11.
`
`The ’924 Patent describes the use of computer devices and one or more
`
`cameras that “optically sens[e] human input” with applications in a “variety of fields
`
`such as computing, gaming, medicine, and education.” Id. In general, the ’924
`
`Patent discloses numerous applications in which a user or an object held by a user
`
`control a computer with one or more cameras as depicted in Fig. 1A below.
`
`
`
`Id., Fig. 1A. In this embodiment, there are multiple cameras (100, 101, 144) located
`
`on a monitor (102) with a screen facing a user (103) and connected to a computer
`
`(106). Id., 3:27-57.
`
`The ’924 Patent also discloses a handheld device, such as a cell phone, that
`
`processes imaging from a person or object to control functions on the handheld
`
` 3
`
`
`
`
`
`
`device. Id., 11:65-12:67. The ’924 Patent describes that the handheld device can
`
`IPR2021-00923
`Patent 8,194,924
`
`“perform a control function by determining [] position, orientation, pointing
`
`direction or other variable with respect to one or more external objects, using an
`
`optical sensing apparatus . . . or with a camera located in the handheld device, to
`
`sense datums or other information external for example to the device.” Id., 12:4-12.
`
`The ’924 Patent describes that the device is able to “acquire features of an object and
`
`use it to determine something” such as object recognition. Id., 13:5-25.
`
`Further, the ’924 Patent discloses a handheld computer with multiple cameras
`
`that can be rotated, as depicted in Fig. 18 below.
`
`
`
` 4
`
`
`
`
`
`
`Id., Fig. 18. The handheld computer (1901) includes a “stereo pair of cameras”
`
`IPR2021-00923
`Patent 8,194,924
`
`(1902, 1910) that can be used to observe gestures of the user holding the handheld
`
`computer (1901) or gestures of another user. Id., 25:50-63; 26:25-40. Images from
`
`one or more of the cameras (1902, 1910) may be processed to utilize functions of
`
`the handheld computer (1901). Id., 25:50-67; 26:1-51
`
`B.
`
`Level of Ordinary Skill in the Art
`
`For the purposes of this Response only, Patent Owner does not dispute the
`
`level of skill of a person of ordinary skill in the art (“POSITA”) identified in the
`
`Petition.
`
`C. Claim Construction
`
`Patent Owner does not contest the constructions proposed in the Petition for
`
`the purpose of this response. See Pet., p. 7. Patent Owner reserves the right to
`
`address claim construction of any term in the Challenged Claims if the Board
`
`institutes inter partes proceedings.
`
`D. Ground 1 – Mann and Numazaki Do Not Render Claims 1-6, 11,
`and 14 Obvious
`
`The combination of Mann and Numazaki does not render claims 1-6, 11, and
`
`14 obvious.
`
` 5
`
`
`
`
`
`
`
`1.
`
`Independent Claim 1
`
`IPR2021-00923
`Patent 8,194,924
`
`The combination of Mann and Numazaki does not render independent claim
`
`1 obvious because it does not teach or suggest the following elements of independent
`
`claim 1.
`
`i.
`
`[1(e)] wherein the computer is adapted to perform a
`control function of the handheld device based on at least
`one of the first camera output and the second camera
`output
`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
`
`output and the second camera output.” Claim element [1(e)] requires the “first
`
`camera output” be an output of a “first camera oriented to view a user of the handheld
`
`device.” Compare claim element [1(e)] with claim element [1(c)]. The Petition’s
`
`contentions regarding claim element [1(e)] do not invoke the recited “second camera
`
`output.” See Pet., pp. 20-25 and 38-42. Instead, the Petition relies solely on
`
`modifying the alleged first camera in Mann in view of Numazaki, which allegedly
`
`teaches or suggests “wherein the computer is adapted to perform a control function
`
`of the handheld device based on” the first camera output. Id., pp. 38-42.
`
`The Petition concedes that the Mann reference (Ex. 1004) does not disclose
`
`“wherein the computer is adapted to perform a control function of the handheld
`
`device based on” the first camera output. Pet., pp. 38-42. The Petition attempts to
`
`address this shortcoming in Mann by combining it with the Numazaki reference (Ex.
`
` 6
`
`
`
`
`
`
`1005). Id. It would not have been obvious to a person of ordinary skill in the art to
`
`IPR2021-00923
`Patent 8,194,924
`
`modify Mann, based on Numazaki, such that the computer of Mann would perform
`
`a control function of the handheld device based on the first camera output as Petition
`
`asserts. See Pet., pp. 20-25 and 38-42.
`
`First, 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 a threshold matter, the Petition uses the term “camera units” to refer to
`
`what Numazaki describes as “photo-detection units.” Compare Pet., p. 14 (“when
`
`the first camera unit is active and off when the second camera unit is active.”) (citing
`
`Ex. 1005, 11:20-32) with Ex. 1005, 11:28-32 (“such that the lighting unit 101 emits
`
`the light when the first photo-detection unit 109 is in a photo-detecting state, whereas
`
`the lighting unit 101 does not emit the light when the second photo-detection unit
`
`110 is in a photodetecting state.”). This response will use the term “photo-detection
`
`unit” (i.e., the term used in Numazaki) to refer to what the Petition identifies as
`
`“camera units.”
`
`Numazaki requires two images from different photo-detection units to
`
`perform an analysis and operate a computer. Numazaki discloses a “reflected light
`
`extraction unit 102” with a “first photo-detection unit 109,” a “second photo-
`
`detection unit 110,” and a “difference calculation unit 111.” Ex. 1005, 10:57-66;
`
`11:20-51; Fig. 2. The first photo-detection unit 109 requires that a lighting unit 101
`
` 7
`
`
`
`
`
`
`emit light during detection. Id. at 11:26-30, Fig. 2. Later, at a different time, when
`
`IPR2021-00923
`Patent 8,194,924
`
`first photo-detection unit 109 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 first photo-detection unit 109 and the image from the
`
`second photo-detection unit 110—are then subtracted from each other before the
`
`information is used in the remainder of the system to operate a computer. See id.,
`
`10:57-66; 11:43-56. Thus, Numazaki’s first embodiment requires: (1) two, not one,
`
`images from different photo-detection units; (2) a lighting unit for illumination; (3)
`
`timing circuitry that selectively activates the lighting unit based on which photo-
`
`detection unit is active; and (4) circuitry for subtracting one image from another.
`
`Petitioner agrees that Numazaki requires two images from different photo-detection
`
`units to perform an analysis and operate a computer. See Pet., pp. 13-15.
`
`Numazaki requires two images to perform an analysis and operate the
`
`computer, so 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.
`
`Similarly, Numazaki does not teach or suggest performing a control function of a
`
`handheld device absent the other hardware that Numazaki identifies as necessary,
`
`such as the lighting unit, the image-subtraction circuitry, and the associated timing
`
`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
`
` 8
`
`
`
`
`
`
`to meet this claim element. See id. Thus, Mann and Numazaki, whether viewed
`
`IPR2021-00923
`Patent 8,194,924
`
`separately or in combination, fail to teach or suggest limitation [1(e)].
`
`Second, the Petition contends that a POSITA would have been motivated to
`
`“utilize Mann’s front-facing camera to recognize gestures performed in front of that
`
`camera pursuant to the teachings of Numazaki” because “such gestures would draw
`
`much less attention than physically interacting with [Mann’s] watch face or using
`
`[Mann’s] PDA stylus,” and “remaining covert and avoiding attention from the
`
`subject are goals of [Mann’s] invention.” Pet., 20-22. Patent Owner disagrees.
`
`The Petition fails to provide any explanation or reasoning as to why
`
`Numazaki’s no-touch gestures would draw “much less” attention than physically
`
`interacting with a watch interface or using a stylus on a PDA. Pet., 21. While the
`
`Petition contends that physically touching a watch interface or using a stylus to
`
`interact with the PDA “runs the risk of being noticed by the subject,” Patent Owner
`
`contends that performing stroke gestures in the air above the watch or above the
`
`PDA results in an even greater risk of being noticed by the subject. Id. This is based
`
`on at least: (a) watches long predate handheld computing devices and these watches
`
`were operated by physical interactions (e.g., winding); and (b) the PDA comes with
`
`a stylus specifically designed for physical contact with a display of the PDA.
`
`Accordingly, physically interacting with a watch or PDA is what would be expected,
`
`while no-touch gesture recognition is much more recent, especially in view of the
`
` 9
`
`
`
`
`
`
`effective filing date of the ’924 Patent, and thus more likely to intrigue the subject
`
`IPR2021-00923
`Patent 8,194,924
`
`and draw their attention. The alleged support from the Bederson declaration
`
`provides no additional insight as to why no-touch gestures would be “much less”
`
`likely than physical interactions to draw the subject’s attention. Ex. 1003, ¶ 47.
`
`Further, Mann discloses that a user interacts with its “touch sensitive
`
`clockface” using finger strokes. Ex. 1004, p. 18. By definition, a finger stroke is
`
`not a stationary gesture. Accordingly, Numazaki would need to generate a set of
`
`images to capture the finger stroke.
`
`As discussed above, to capture a stationary gesture, Numazaki requires two
`
`images from two different photo-detector units, where the lighting unit is active for
`
`one image but not the other image. To capture the non-stationary finger stroke
`
`gesture, this process would need to be repeated multiple times, which would cause
`
`the lighting unit to flicker. The flickering would most definitely draw attention to
`
`the user’s interaction with Mann’s watch or PDA, which, as acknowledged by
`
`Petition, is exactly what Mann wants to avoid. Pet., pp. 20-21. Accordingly, the
`
`motivation to combine the references is lacking.
`
`Third, the Petition contends that a POSITA would have been motivated to
`
`“implement Mann’s device with the no-touch gesture functionality” taught by
`
`Numazaki because Mann’s native touch-based gesture control would obstruct the
`
`user’s view of the watch face or PDA display when the user physically interacts with
`
`
`10
`
`
`
`
`(e.g., touches) the watch or PDA, respectively. Pet., pp. 22-23. Patent Owner
`
`IPR2021-00923
`Patent 8,194,924
`
`disagrees.
`
`Even assuming arguendo that an obstruction does occur with the watch face
`
`or PDA display when the user physically interacts with the watch or PDA,
`
`respectively, the obstruction is very brief to start a recording, stop a recording, etc.
`
`Further, Mann even suggests that an obstruction to the watch face is of little concern
`
`since “the clock menu is usable without paying much attention to the face of the
`
`clock.” Ex. 1004, p. 18.
`
`Moreover, Mann is focused on using the watch or PDA to record a subject
`
`“without the subject’s knowledge or at least without the subject being certain as to
`
`whether or not said picture or video is being taken.” Ex. 1004, p. 9. While these
`
`physical interactions may present a temporary obstruction, physical interactions with
`
`a watch and PDA are common and expected, and thus provide a cover for the user
`
`to trigger the recording. By implementing Mann’s device with no-touch gesture
`
`functionality, this cover would be lost, making it more difficult for the user to remain
`
`covert and avoid attention from the subject. Accordingly, the motivation to combine
`
`the references is lacking.
`
`Fourth, the Petition contends that a POSITA would have been motivated to
`
`“implement Mann’s device with the no-touch gesture functionality” taught by
`
`Numazaki because Mann’s native touch-based gesture control would result in the
`
`
`11
`
`
`
`
`user’s fingers touching the glass covering the user-facing camera, “causing the
`
`IPR2021-00923
`Patent 8,194,924
`
`fidelity of that camera to decrease over time due to grease and grime from the user’s
`
`finger.” Pet., pp. 22 and 24. Patent Owner disagrees.
`
`Mann discloses a wristwatch as depicted in Fig. 3 below.
`
`Ex. 1004, Fig. 3 (annotated). The wristwatch includes a face having a user-facing
`
`camera (350) and a display unit (320) that is rectangular and functions as a
`
`viewfinder for camera (310). As shown, the user-facing camera (350) is separate
`
`
`
`
`12
`
`
`
`
`from the display unit (320). Ex. 1004, p. 16; Fig. 3. Mann also discloses that the
`
`IPR2021-00923
`Patent 8,194,924
`
`wristwatch display (400) is “480 pixels down and 640 across” (i.e., a rectangle) and
`
`includes a circle containing a clock. Ex. 1004, p.17; Fig. 4. A portion of Fig. 4 is
`
`reproduced below:
`
`
`
`
`
`Ex. 1004, Fig. 4 (annotated). Mann discloses the wristwatch display (400) is
`
`“superimposed on top of a video signal from the camera.” Ex. 1004, p. 17. This
`
`means that Mann’s rectangular display (400) with the circular clock fits on top of
`
`the rectangular display unit (320) (i.e., the viewfinder for camera (310)), and thus
`
`
`13
`
`
`
`
`does not overlap with the separate user-facing camera (350). The user interacts with
`
`IPR2021-00923
`Patent 8,194,924
`
`the clock by “strok[ing] the face of the clock in the direction desired.” Ex. 1004, p.
`
`18. Accordingly, the user’s finger strokes are confined to the glass above the display
`
`unit (320) (i.e., above the face of the clock), leaving the glass above user-facing
`
`camera (350) untouched. The Petition’s stated problem serving as the motivation
`
`for combining the references does not actually exist.
`
`Fifth, the Petition contends that a POSITA would have been motivated to
`
`“utilize Mann’s front-facing camera to recognize gestures performed in front of that
`
`camera pursuant to the teachings of Numazaki” because “the PHOSITA would have
`
`anticipated success in modifying Mann’s wristwatch based on similarities in
`
`functionality and structure of the computer, cameras, and control functionality taught
`
`by Mann and Numazaki.” Pet., 21. Patent Owner disagrees.
`
`The Petition contends that Mann “already contemplates the requisite structure
`
`to capture gestures (i.e., PDA and wristwatch devices with cameras facing that user),
`
`and it expressly describes receiving finger-based input to control the operation of the
`
`wristwatch.” Id. While Mann does disclose a single user-facing camera, this is
`
`drastically different than the multiple photo-detection units, lighting unit, timing
`
`circuitry, and image subtraction circuitry, discussed above, required by Numazaki.
`
`Further, Mann’s single user-facing camera is for recording the user of the wristwatch
`
`or PDA while the wristwatch or PDA is using another camera to record another user.
`
`
`14
`
`
`
`
`Ex. 1004, pp. 15-16. In other words, Mann’s single user-facing camera is not
`
`IPR2021-00923
`Patent 8,194,924
`
`involved in Mann’s finger-based input control, which is handled exclusively using a
`
`touchscreen. Ex. 1004, p. 17. Accordingly, the “functionality and structure of the
`
`computer, cameras, and control functionality” taught by Mann and Numazaki are
`
`dissimilar, and thus a POSTIA could not anticipate a successful combination based
`
`on them.
`
`For at least these reasons, the combination of Mann and Numazaki fails to
`
`teach or suggest at least claim element [1(e)]. Accordingly, the combination of
`
`Mann and Numazaki fails to render independent claim 1 unpatentable.
`
`2.
`
`Dependent Claim 2
`
`Dependent claim 2 recites “The handheld device of claim 1 wherein the
`
`handheld device comprises a mobile phone.” Claim 2 depends from and adds
`
`limitations to claim 1. The combination of Mann and Numazaki fails to render claim
`
`1 unpatentable, therefore, the combination of Mann and Numazaki fails to render
`
`dependent claim 2 unpatentable for at least the same reasons.
`
`3.
`
`Dependent Claim 3
`
`Dependent claim 3 recites “The handheld device of claim 1 wherein the first
`
`camera is adapted to acquire an image of at least a portion of the user.” Claim 3
`
`depends from and adds limitations to claim 1. The combination of Mann and
`
`Numazaki fails to render claim 1 unpatentable, therefore, the combination of Mann
`
`
`15
`
`
`
`
`and Numazaki fails to render dependent claim 3 unpatentable for at least the same
`
`IPR2021-00923
`Patent 8,194,924
`
`reasons.
`
`4.
`
`Dependent Claim 4
`
`Dependent claim 4 recites “The handheld device of claim 1 wherein the
`
`second camera is adapted to acquire an image of the object.” Claim 4 depends from
`
`and adds limitations to claim 1. The combination of Mann and Numazaki fails to
`
`render claim 1 unpatentable, therefore, the combination of Mann and Numazaki fails
`
`to render dependent claim 4 unpatentable for at least the same reasons.
`
`5.
`
`Dependent Claim 5
`
`Dependent claim 5 recites “The handheld device of claim 1 wherein the
`
`second camera is adapted to acquire a video of the object.” Claim 5 depends from
`
`and adds limitations to claim 1. The combination of Mann and Numazaki fails to
`
`render claim 1 unpatentable, therefore, the combination of Mann and Numazaki fails
`
`to render dependent claim 5 unpatentable for at least the same reasons.
`
`6.
`
`Dependent Claim 6
`
`Dependent claim 6 recites “The handheld device of claim 1 wherein the
`
`computer is operable to determine a gesture based on at least one of the first camera
`
`output and the second camera output.” Claim 6 depends from and adds limitations
`
`to claim 1. The combination of Mann and Numazaki fails to render claim 1
`
`
`16
`
`
`
`
`unpatentable, therefore, the combination of Mann and Numazaki fails to render
`
`IPR2021-00923
`Patent 8,194,924
`
`dependent claim 6 unpatentable for at least the same reasons.
`
`7.
`
`Dependent Claim 11
`
`Dependent claim 11 recites “The handheld device of claim 1 wherein the
`
`computer is adapted to generate control instructions for a display that is separate
`
`from the handheld device.” Claim 11 depends from and adds limitations to claim 1.
`
`The combination of Mann and Numazaki fails to render claim 1 unpatentable,
`
`therefore, the combination of Mann and Numazaki fails to render dependent claim
`
`11 unpatentable for at least the same reasons.
`
`8.
`
`Dependent Claim 14
`
`Dependent claim 14 recites “The handheld device of claim 1 wherein the
`
`computer is adapted to transmit information over an internet connection.” Claim 14
`
`depends from and adds limitations to claim 1. The combination of Mann and
`
`Numazaki fails to render claim 1 unpatentable, therefore, the combination of Mann
`
`and Numazaki fails to render dependent claim 14 unpatentable for at least the same
`
`reasons.
`
`E. Ground 2 – The Combination of Mann, Numazaki, and Amir Does
`Not Render Claims 7, 8, 10, 12, and 13 Obvious
`
`Dependent claims 7, 8, 10, 12, and 13 depend from and add limitations to
`
`claim 1. For at least the reasons discussed above with respect to Ground 1, the
`
`combination of Mann and Numazaki does not teach or suggest one or more
`
`17
`
`
`
`
`limitations of claim 1. Amir does not remedy those deficiencies, and the Petition
`
`IPR2021-00923
`Patent 8,194,924
`
`does not so assert. See Pet., pp. 54-59. Therefore, the combination of Mann,
`
`Numazaki, and Amir fails to render dependent claims 7, 8, 10, 12, and 13
`
`unpatentable.
`
`F. Ground 3 – The Combination of Mann, Numazaki, and Aviv Does
`Not Render Claims 6 and 9 Obvious
`
`Dependent claims 6 and 9 depend from and add limitations to claim 1. For at
`
`least the reasons discussed above with respect to Ground 1, the combination of Mann
`
`and Numazaki does not teach or suggest one or more limitations of claim 1. Aviv
`
`does not remedy those deficiencies, and the Petition does not so assert. See Pet., pp.
`
`64-65. Therefore, the combination of Mann, Numazaki, and Aviv fails to render
`
`dependent claims 6 and 9 unpatentable.
`
`IV. THE PETITION SHOULD BE DENIED BECAUSE THE BOARD
`DOES NOT HAVE JURISDICTION OVER EXPIRED PATENTS
`
`35 U.S.C. § 2(a)(1) states that United States Patent and Trademark Office
`
`“shall be responsible for the granting and issuing of patents. . . .” The Patent Trial
`
`Appeal Board is required to “conduct inter partes reviews and post-grant reviews
`
`pursuant to chapters 31 and 32.” 35 U.S.C. § 6(b)(4). The burden of proof required
`
`to find a claim unpatentable is the preponderance of evidence, which is a lower
`
`burden of proof than the clear and convincing standard applied in district courts. 35
`
`U.S.C. § 316(a)(9) requires that the Director prescribe regulations “setting forth
`
`
`18
`
`
`
`
`standards and procedures for allowing the patent owner to move to amend the patent
`
`IPR2021-00923
`Patent 8,194,924
`
`under subsection (d).” This is due, in part, to the fact that there is a lower burden of
`
`proof required before the Board.
`
`The ’924 Patent has expired, so the opportunity to amend the ’924 Patent is
`
`not available to Patent Owner. As a result, determinations regarding the validity of
`
`this expired patent should be reserved for Article III courts under the clear and
`
`convincing standard.
`
`V. CONCLUSION
`
`The Petition should be denied. Petitioner has not established that the cited
`
`references render unpatentable any claim of the ’924 Patent.
`
`
`19
`
`
`
`
`
`CERTIFICATE OF COMPLIANCE
`Pursuant to 37 C.F.R. § 42.24(d), I hereby certify that the foregoing Patent
`
`IPR2021-00923
`Patent 8,194,924
`
`Owner’s Preliminary Response contains 3,747 words as measured by the word
`
`processing software used to prepare the document, excluding the cover page,
`
`signature block, and portions exempted under 37 C.F.R. § 42.24(a) or (b).
`
`
`
`DATED: September 7, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Todd E. Landis/
`Todd E. Landis
`Registration No. 44,200
`Counsel for Patent Owner
`
`
`
`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on September 7,
`
`IPR2021-00923
`Patent 8,194,924
`
`
`
`
`
`2021, the foregoing document was served on counsel of record for Petitioner by
`
`filing this document through the End-to-End System, as well as via electronic mail
`
`to counsel of record for Petitioner at the following address: Adam P. Seitz
`
`(Adam.Seitz@eriseip.com); Paul R. Hart (Paul.Hart@eriseip.com).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Todd E. Landis/
`Todd E. Landis
`Registration No. 44,200
`Counsel for Patent Owner
`
`
`
`
`
`
`