Inter Partes Review
`U.S. Patent No. 8,194,924
`Oral Argument, September 14, 2022
`
`Apple Inc. v. Gesture Technology Partners LLC
`Case No. IPR2021-00923
`
`Petitioner’s Demonstrative Exhibits – Not Evidence
`
`Petitioner’s DX-1
`
`
`U.S. Patent No. 8,194,924
`Oral Argument, September 14, 2022
`
`Apple Inc. v. Gesture Technology Partners LLC
`Case No. IPR2021-00923
`
`Petitioner’s Demonstrative Exhibits – Not Evidence
`
`Petitioner’s DX-1
`
`
`
`Grounds
`
`Ground 1: Claims 1-6, 11, 14
`} Mann (Ex. 1004) in view of Numazaki (Ex. 1005)
`
`Ground 2: Claims 7, 8, 10, 12, 13
`} Mann in view of Numazaki and in further view of Amir (Ex. 1006)
`
`Ground 3: Claims 6, 9
`} Mann in view of Numazaki and in further view of Aviv (Ex. 1007)
`
`Petition at 6 (identifying challenged claims)
`
`Petitioner’s DX-2
`
`
`
`Remaining Disputes
`
`1.
`
`The Challenged Claims do not exclude Numazaki’s image
`differencing.
`
`2.
`
`A POSITA would have been motivated to combine Mann and
`Numazaki.
`3. Mann’s mobile videophone satisfies Claim 2’s “mobile phone.”
`
`4.
`
`A POSITA would have been motivated to implement Amir’s pupil
`detection in Mann’s devices.
`
`5. Mann, Amir, and Aviv are analogous art.
`
`6.
`
`The PTAB has jurisdiction over expired patents.
`
`Petitioner’s DX-3
`
`
`
`Proposed Combination
`} Mann’s native teachings employ touch gestures on
`device screen to initiate covert video recording:
`
`Petition, 7-25 (describing Mann, Figs. 3-4).
`
`Petitioner’s DX-4
`
`
`
`Proposed Combination (cont.)
`} Petition proposes
`replacing touch gestures with
`Numazaki’s no-touch gestures to initiate covert video
`recording:
`
`Petition, 7-25
`
`Petitioner’s DX-5
`
`
`
`Numazaki’s Fig. 2 image differencing functionality
`
`Petitioner’s DX-6
`
`
`
`Motivation to Combine:
`No-touch gestures are more covert
`
`Petition, 18-22; Bederson Dec. (Ex. 1003), ¶47; Bederson Supp. Dec. (Ex. 1018), ¶9
`
`Petitioner’s DX-7
`
`
`
`Motivation to Combine:
`No-touch gestures avoid blocking display
`
`no touch (1) avoids blocking
`} In Mann’s devices,
`display and (2) avoids finger touching camera:
`
`Numazaki, 52:29-32
`
`Petition, 22-25; Bederson Dec. (Ex. 1003), ¶48
`
`Petitioner’s DX-8
`
`
`
`Motivation to combine:
`Similarities support expectation of success
`} Mann and Numazaki both teach:
`} Camera-equipped watches and PDAs
`} Converting user gestures into commands
`} Reasonable expectation of success:
`
`Petition, 20-22; Bederson Dec. (Ex. 1003), ¶46.
`
`Petitioner’s DX-9
`
`
`
`Open-ended claims include Numazaki’s Fig. 2
`} [Claim 1(c)] 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
`} PO: Must be unmodified output of only one camera
`
`POR, 9-10.
`
`Petitioner’s DX-10
`
`
`
`Open-ended claims include Numazaki’s Fig. 2
`} The Board rejected PO’s argument at institution
`
`Institution Decision, 16-17.
`
`Petitioner’s DX-11
`
`
`
`Motivation to Combine:
`No-touch gestures are more covert
`
`Petition, 18-22; Bederson Dec. (Ex. 1003), ¶47; Bederson Supp. Dec. (Ex. 1018), ¶9
`
`Petitioner’s DX-12
`
`
`
`Motivation to Combine:
`No-touch gestures are more covert (cont.)
`} PO: touch gestures are well known and indicate to
`subject that user is controlling device
`
`POR, 10-11
`
`Petitioner’s DX-13
`
`
`
`Motivation to Combine:
`No-touch gestures are more covert (cont.)
`is to
`} PO gets the analysis exactly backwards—goal
`avoid indicating that user has interacted with device
`
`Bederson Supp. Dec. (Ex. 1018), ¶¶4-5
`
`Petitioner’s DX-14
`
`
`
`Motivation to Combine:
`No-touch gestures are more covert (cont.)
`} Mann’s small screen requires focus of user for precise touch
`gestures, decreasing ability to remain covert
`
`Bederson Supp. Dec. (Ex. 1018), ¶9.
`
`Petitioner’s DX-15
`
`
`
`Motivation to Combine:
`No-touch gestures are more covert (cont.)
`} PO’s new Sur-Reply arguments re PDA misconstrue Mann
`
`Sur-Reply, 3-4.
`
`Petitioner’s DX-16
`
`
`
`Dr. Bederson is well qualified
`} PO asks the Board to ignore Dr. Bederson’s testimony because he
`lacks expertise in “things of a ‘covert nature.’”
`
`} Dr. Bederson is a widely recognized leader in the relevant
`technology—human-computer interaction
`} Member and past director of “Human-Computer Interaction Lab,” one of
`the best known and oldest HCI research groups
`} Numerous awards for HCI contributions
`
`} Dr. Bederson has direct experience with specific technology
`implicated by proposed combination
`} Designed image sensing and image processing systems
`} Designed applications for mobile devices
`} Direct experience with CMOS image sensors
`} Direct experience with infrared transmitters and receivers
`
`POR, 12; Reply, 7-8.
`
`Petitioner’s DX-17
`
`
`
`Motivation to combine:
`Numazaki expressly motivates combination
`
`no touch (1) avoids blocking
`} In Mann’s devices,
`display and (2) avoids finger touching camera:
`
`Numazaki, 52:29-32
`
`Petition, 22-25; Bederson Dec. (Ex. 1003), ¶48
`
`Petitioner’s DX-18
`
`
`
`PO: A benefit of combination can be ignored if not a
`perfect solution
`
`Sur-Reply, 5-6.
`
`Petitioner’s DX-19
`
`
`
`PO: A benefit of combination can be ignored if not a
`perfect solution (cont.)
`} PO advances the same argument re camera fidelity
`
`Sur-Reply, 7-8.
`
`Petitioner’s DX-20
`
`
`
`Numazaki’s reflected light images are suitable for
`humans
`
`POR, 19-20; Occhiogrosso Dec. (Ex. 2002), ¶60 (verbatim argument with no elaboration).
`
`Petitioner’s DX-21
`
`
`
`Numazaki’s reflected light images are suitable for
`humans (cont.)
`
`Bederson Supp. Dec.; (Ex. 1018), ¶¶12-13; Reply, 15-17.
`
`Petitioner’s DX-22
`
`
`
`Numazaki’s reflected light images are suitable for
`humans (cont.)
`} Sur-Reply introduces new argument
`imaging must be invisible to humans
`
`that
`
`infrared
`
`Sur-Reply, 8-9
`
`Petitioner’s DX-23
`
`
`
`Claim 2: Mann’s wristwatch videotelephone is a
`“mobile phone”
`
`Petition, 42-43; Bederson Dec. (Ex. 1003), ¶¶49-51.
`
`Petitioner’s DX-24
`
`
`
`Claim 2: Improper to import “voice call”
`requirement into “mobile phone”
`
`} Patent Owner concedes that there is no discussion whatsoever of “voice calls” in
`the ’924 Patent.
`
`POR, 25.
`
`} PO demands more of the prior art than its own patent.
`
`Petitioner’s DX-25
`
`Sur-Reply, 13-14.
`
`
`
`Re Mann+Numazaki+Amir combination, PO’s expert
`ignores key evidence of technical feasibility
`} PO’s expert: proposed combination too complex:
`
`POR, 30-31;
`Ex. 2002, ¶80.
`
`} Occhiogrosso:
`that Numazaki shows it was
`} (1)
`Ignores Petition’s argument
`technically feasible to incorporate multiple cameras in watch form
`factor—Petition, 52-53; Ex. 1003, ¶¶60-61
`} (2) Ignores Petition’s reliance on Amir’s express teaching that it was
`amenable to be incorporated in “extremely compact overall
`package”—Petition, 52-53; Ex. 1003, ¶60
`
`Petitioner’s DX-26
`
`
`
`PO mischaracterizes Mann+Numazaki+Amir
`combination
`} PO suggests that Mann advocates positioning a
`camera so low that the subject’s eyes are not visible
`
`Sur-Reply, 16
`
`Petitioner’s DX-27
`
`
`
`PO ignores record re Amir’s pupil detection in Mann’s
`devices
`PO argues Petitioner and its
`} Sur-Reply at 16-17:
`expert provided no “explanation as to how ‘open
`eyes’ improve or accelerate ‘subject identification.’”
`
`Bederson Dec.
`(Ex. 1003), ¶59.
`
`Petitioner’s DX-28
`
`
`
`Mann, Amir, & Aviv are Analogous Art
`
`Reply, 24; Petition, 13, 17-18, 49-50, 61,
`
`Petitioner’s DX-29
`
`
`
`The Board has Jurisdiction to Review Expired
`Patents
`} PO argues the PTO has no interest in reviewing
`patents once they expire. POR, 1-2.
`
`} The Federal Circuit has expressly recognized the
`importance of the Board’s review of expired patents
`given that they can be asserted for past damages.
`} Sony Corp. v. Iancu, 924 F.3d 1235 (Fed. Cir. 2019); Reply, 25-26
`(discussing the same).
`
`} Patent Owner did not address issue in Sur-Reply.
`
`Petitioner’s DX-30
`
`
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