Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Date: December 6, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.,
`Petitioner,
`v.
`GESTURE TECHNOLOGY PARTNERS, LLC,
`Patent Owner.
`
`IPR2021-00923
`Patent 8,194,924 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, GREGG I. ANDERSON, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`DOUGAL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 10
`Date: December 6, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.,
`Petitioner,
`v.
`GESTURE TECHNOLOGY PARTNERS, LLC,
`Patent Owner.
`
`IPR2021-00923
`Patent 8,194,924 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, GREGG I. ANDERSON, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`DOUGAL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`
`
`IPR2021-00923
`Patent 8,194,924 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`Petitioner, Apple Inc., requests that we institute an inter partes review
`to challenge the patentability of claims 1–14 (the “challenged claims”) of
`U.S. Patent 8,194,924 B2 (Ex. 1001, “the ’924 patent”). Paper 1 (“Petition”
`or “Pet.”). Patent Owner, Gesture Technology Partners, LLC, argues that
`Petitioner’s request is deficient and should not be granted. Paper 8
`(“Preliminary Response” or “Prelim. Resp.”).
`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
`demonstration of a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim, we institute an inter partes review.1
`B. Related Matters
`The parties identify these related matters: Gesture Technology
`Partners, LLC v. Huawei Device Co., Ltd., No. 2:21-cv-00040 (E.D. Tex.);
`Gesture Technology Partners, LLC v. Samsung Electronics Co., No. 2:21-
`cv-00041 (E.D. Tex.); Gesture Technology Partners, LLC v. Apple Inc., No.
`6:21-cv-00121 (W.D. Tex.); Gesture Technology Partners, LLC v. Lenovo
`Group Ltd., No. 6:21-cv-00122 (W.D. Tex.); and Gesture Technology
`Partners, LLC v. LG Electronics, Inc., No. 6:21-cv-00123 (W.D. Tex.). Pet.
`75; Paper 6, 1. Patent Owner identifies these related Board proceedings:
`IPR2021-00917; IPR2021-00920; and IPR2021-00922. Paper 6, 2.
`C. The ’924 Patent
`The ’924 patent is entitled “Camera Based Sensing in Handheld,
`Mobile, Gaming or Other Devices.” Ex. 1001, code (54). The ’924 patent is
`
`
`1 Our findings and conclusions at this stage are preliminary, and thus, no
`final determinations are made.
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`2
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`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.” Id. at Abstract.
`The ’924 patent describes the use of computer devices and one or
`more cameras that “optically sens[e] human input.” Id. at 2:7–11. In general,
`the ’924 patent discloses numerous applications in which a user or an object
`held by a user can control a computer with one or more cameras as depicted
`in Figure 1A below.
`
`
`Figure 1A shows “a combination of one or more TV cameras (or other
`suitable electro-optical sensors) and a computer to provide various position
`and orientation related functions of use.” Id. at 3:19–23. As shown, there are
`multiple cameras (100, 101, 144) located on a monitor (102) with a screen
`(103) facing a user and connected to a computer (106). Id. at 3:27–57.
`The ’924 patent discloses a handheld computer with multiple cameras
`(1902, 1910) depicted in Figure 18 below. Id. at 25:40–45.
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`As illustrated in Figure 18, a handheld computer (1901) with central
`processing unit (CPU) houses a camera (1902) that can be paired in stereo
`with another camera (1910), either of which may rotate about an axis to
`view a user or aspect of that user like a finger (1906). Id. at 25:40–43. When
`aimed at the user, the camera(s) can be used to obtain images and video
`images of a user’s fingers, hand, objects in the hand, gestures, and facial
`expressions. Id. at 25:50–63. Facing one or more of the cameras away from
`the user, they “can also be used to see gestures of others.” Id. at 26:25.
`D. Illustrative Claim
`Petitioner challenges claims 1–14 of the ’924 patent. Claim 1 is the
`sole independent claim and is illustrative:
`1. A handheld device comprising:
`a housing;
`a computer within the housing;
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`a first camera oriented to view a user of the handheld
`device and having a first camera output; and
`a second camera oriented to view an object other than the
`user of the device and having a second camera output, wherein
`the first and second cameras include non-overlapping fields of
`view, and 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.
`Ex. 1001, 26:54–65.
`
`
`II. ANALYSIS
`
`A. Summary of Issues
`In the below analysis, we first address the grounds of unpatentability.
`We then address Patent Owner’s jurisdiction arguments.
`B. Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 6),
`supported by the declaration of Benjamin B. Bederson (Ex. 1003):
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–6, 11, 14
`103(a)2
`Mann,3 Numazaki4
`7, 8, 10, 12, 13
`103(a)
`Mann, Numazaki, Amir5
`6, 9
`103(a)
`Mann, Numazaki, Aviv6
`
`
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the challenged patent claims priority before March 16, 2013, we
`refer to the pre-AIA versions.
`3 Canadian Published Patent Application 2,237,939, published Aug. 28,
`1998 (“Mann”) (Ex. 1004).
`4 U.S. Patent 6,144,366, issued Nov. 7, 2000 (“Numazaki”) (Ex. 1005).
`5 U.S. Patent 6,539,100 B1, issued Mar. 25, 2003 (“Amir”) (Ex. 1006).
`6 U.S. Patent 5,666,157, issued Sept. 9, 1997 (“Aviv”) (Ex. 1007).
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`1. Legal Standards for Unpatentability
`Petitioner bears the burden to demonstrate unpatentability. Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015). At this preliminary stage, we determine whether the information
`presented in the Petition shows a reasonable likelihood that Petitioner would
`prevail in establishing that at least one of the challenged claims would have
`been unpatentable. See 35 U.S.C. § 314(a).
`A claim is unpatentable as obvious under 35 U.S.C. § 103 if “the
`differences between the subject matter sought to be patented and the prior art
`are such that the subject matter as a whole would have been obvious at the
`time the invention was made to a person having ordinary skill in the art to
`which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`398, 406 (2007) (quoting 35 U.S.C. § 103(a)). We resolve the question of
`obviousness based on underlying factual determinations, including: (1) the
`scope and content of the prior art; (2) any differences between the prior art
`and the claims; (3) the level of skill in the art; and (4) when in evidence,
`objective indicia of nonobviousness. See Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966).
`We apply these principles to the Petition’s challenges.
`2. Level of Ordinary Skill in the Art
`Petitioner asserts that “[a] person having ordinary skill in the art
`(‘PHOSITA’) at the time of the ’924 Patent would have had at least a
`bachelor’s degree in electrical engineering or equivalent with at least one
`year of experience in the field of human computer interaction” and that
`“[a]dditional education or experience might substitute for the above
`requirements.” Pet. 5 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not
`dispute Petitioner’s level of ordinary skill in the art. Prelim. Resp. 5.
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`We are persuaded, on the present record, that Petitioner’s declarant’s
`statement is consistent with the problems and solutions in the ’924 patent
`and prior art of record. We adopt this definition for the purposes of this
`Decision.
`3. Claim Construction
`In inter partes review, we construe claims using the same claim
`construction standard that would be used to construe the claim in a civil
`action under 35 U.S.C. § 282(b), including construing the claim in
`accordance with the ordinary and customary meaning of such claim as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent. 37 C.F.R. § 42.100(b) (2020).
`Neither party provides any express claim constructions. See Pet. 7;
`Prelim. Resp. 5. We agree that no terms require express construction at this
`stage. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
`F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms that are in
`controversy, and only to the extent necessary to resolve the controversy.”)
`(internal quotation omitted).
`4. Obviousness over Mann and Numazaki
`Petitioner argues that the combination of Mann and Numazaki would
`have rendered obvious claims 1–6, 11, and 14. Pet. 7–49. Patent Owner
`contends that Numazaki does not disclose all the limitations of claim 1.
`Prelim. Resp. 5–15.
`We first give an overview of the asserted prior art, Mann and
`Numazaki. This is followed by a discussion of Petitioner’s positions and
`Patent Owner’s arguments in response where we conclude that Petitioner has
`demonstrated a reasonable likelihood of prevailing with respect to at least
`one claim.
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`a) Mann
`Mann is directed to “a personal camera with viewfinder means and a
`personal video annotation system.” Ex. 1004, Abstract. Mann states that
`“[t]he camera system integrates the process of making a personal
`handwritten diary or the like, with the capture of video.” Id.
`Figure 1 depicts an embodiment with “a camera borne by a personal
`digital assistant (PDA).” Id. at 10.
`
`
`As shown in Figure 1, the PDA includes a video camera (110), an auxiliary
`screen (120) for displaying the image captured by the video camera, a screen
`for notetaking (130), and a pen (140). Id. at 11–12. Mann teaches that the
`PDA can optionally include an second camera (150) “if the user wishes to
`make a video recording of himself/herself while recording another person
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`with camera 110,” so as to record “both sides of the conversation.” Id. at 12.
`The PDA is connected, via wire (160) that may “run up the sleeve of the
`user” to a separate body worn pack (170). Id. The body pack includes a
`battery pack (172), a computer system (174), and a communications system
`(176). The communications system contains a “packet radio terminal node
`controller (high level data link controller with modem) and radio, which
`typically establishes an Internet connection by way of antenna 178.” Id.
`Mann also teaches a “wristwatch embodiment 300 of the invention
`depicted in Fig[ure] 1,” which is shown in Figure 3. Id. at 13. A detail view
`of Figure 3 is reproduced below, where the separate body worn pack (170) is
`not fully depicted, as it is identical to that shown in Figure 1.
`
`
`In the detail view of Figure 3 above, a wristwatch (300) is illustrated
`which houses a first camera (310) pointed to record another person from the
`wearer and a second camera (350) to record the wristwatch wearer
`interviewing the other person. Id. The wristwatch also includes a viewfinder
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`in the form of an auxiliary screen (320) which shows what the first camera is
`seeing. Id. As in the prior embodiment, cabling runs to the separate body
`worn pack (170) which includes a battery pack (172), a computer system
`(174), and a communications system (176). In this way the “video from
`camera 310 may be transmitted and recorded at remote sites, while the
`wearer of the wristwatch may be advised by a remote legal expert on the
`best approach for dealing with the corrupt or disrespectful official.” Id. at
`13–14. Mann teaches that “[i]nteraction with the wristwatch version of the
`invention . . . may be done through a pen-based or touch-based interface to
`the screen.” Id. at 14.
`Figure 4, reproduced below, shows a “display 400 [that] is the image
`of a clock face, superimposed on top of a video signal from the camera.” Id.
`
`
`As shown, the display (400) includes a circle (420) with numbers
`(430) in order to tell time. Id. “[T]he numbers may be assigned a secondary
`meaning (e.g., select ‘0’ to stop recording, ‘4’ to kill all processes and halt
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`the processor, ‘7’ to wake up the system from sleep mode, etc.).” Id. Mann
`teaches that “[t]he user just needs to stroke the face of the clock in the
`direction desired (e.g. stroke the clockface in the 2:00 direction to enter the
`number ‘2’).” Id. at 15. Users can enter information like letters, symbols,
`and numbers such as to create a video file header, or to enter a telephone
`number. Id.
`b) Numazaki
`Numazaki “relates to a method and an apparatus for generating
`information input in which input information is extracted by obtaining a
`reflected light image of a target object.” Ex. 1005, 1:8–11.
`Figure 1, reproduced below, depicts a block diagram for an
`information input generation apparatus.
`
`
`Figure 1 shows that an information input generation apparatus includes a
`lighting unit (101), a reflected light extraction unit (102), a feature data
`generation unit (103), and a timing signal generation unit (104). Id. at 10:23–
`28. Numazaki describes emitting light from the light emitting unit (101) and
`that the intensity of the light varies in time according to a timing signal from
`the timing signal generation unit (104). Id. at 10:29–31. The light is directed
`onto a target object and light reflected from the target object is extracted by
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`the reflected light extraction unit (102). Id. at 10:31–35. Numazaki teaches
`that the feature data generation unit (103) extracts feature data from the
`reflected light image. Id. at 10:57–61. Numazaki further teaches operating a
`computer based on information obtained from the feature data. Id. at 10:61–
`66.
`
`Figure 78, reproduced below, illustrates an information input
`generation apparatus.
`
`
`Figure 78 shows “a compact portable information device” having “a size that
`can be held by one hand.” Id. at 52:5–8. The device includes a window (712)
`for a lighting unit and a photo-detection sensor unit. Id. at 52:12–14.
`Numazaki describes controlling the position of a cursor (714) on a screen by
`moving a finger (713) in front of the window (712). Id. at 52:14–16.
`Numazaki also describes implementing the lighting and camera
`structure in a wristwatch such that “a cursor 717 can be controlled by
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`moving a finger 716” within an “operation space” where “[w]indows 718
`and 719 are provided for the lighting unit and the photo-detection sensor
`unit.” Id. at 52:20–29. This arrangement is illustrated in Fig. 79 below:
`
`
`Figure 79 above, shows a wristwatch with a light source (718) and a camera
`(719) used to track a fingertip gesture to manipulate a cursor (717). Id. The
`windows are positioned on the device so that “it is possible to prevent the
`operating finger from obstructing the view of the display.” Id. at 52:30–32.
`c) Claim 1
`Petitioner relies on two different combinations of Mann and
`Numazaki for teaching or suggesting all of the elements of claim 1. Pet. 18–
`42. Petitioner combines the PDA shown in Mann’s Figure 1 with aspects of
`the compact portable information device shown in Numazaki’s Figure 78.
`Id. Petitioner alternatively combines Mann’s wristwatch shown in Figure 3,
`with aspects of Numazaki’s wristwatch shown in Figure 79. Petitioner
`appears to be arguing that though the form factors are different (PDA v.
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`wristwatch), the disclosed hardware and functionality are essentially the
`same. Petitioner further appears to be arguing that, at least with respect to
`claim 1, either combination satisfies all limitations.
`Petitioner argues that both embodiments of Mann disclose a handheld
`device (id. at 25–28 (citing Ex. 1004, 1, 10, 13, Figs. 1, 3)) with a computer
`within a housing (id. at 28–32 (citing Ex. 1004, 3, 11–13, 20–21, Figs. 1,
`3)), a first camera having an output and oriented to view a user of the
`handheld device (id. at 33–34 (citing Ex. 1004, 12–13, 18, Figs. 1, 3)), and a
`second camera having an output and oriented to view an object other than
`the user and having a non-overlapping field of view with the first camera (id.
`at 34–37 (citing Ex. 1004, 11–12, 18, 21, Figs. 1, 3)), as required by claim 1.
`Patent Owner does not contest that Mann teaches these claim limitations.
`See generally Prelim. Resp. We determine that Petitioner has adequately
`shown how Mann teaches each of these claim limitations.
`For the final limitation of claim 1, reproduced immediately below,
`Petitioner relies on the combination of Mann and Numazaki. Pet. 18–25, 38–
`42. Patent Owner argues that Petitioner has not satisfied its burden with
`respect to this limitation. We first address the teachings of Mann and
`Numazaki; this is followed by a discussion of Petitioner’s reasons to
`combine these two references.
`(1) Adapted to perform a control function
`Claim 1 requires:
`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.
`Ex. 1001, 26:62–65.
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`The Petition relies on the combination of Mann and Numazaki for
`teaching a computer adapted to perform a control function of the handheld
`device based on the first camera output, which is the camera facing the user.
`Pet. 18–25, 38–42. The Petition does not address the alternative involving
`the second camera output. See id.; Prelim. Resp. 6.
`Petitioner argues that Mann teaches controlling a wristwatch with a
`touch-based interface and that a PHOSITA would have understood a PDA to
`have similar controls, “such as through use of the PDA stylus.” Pet. 19–20,
`38–39 (citing Ex. 1004 14–15, Fig. 4; Ex. 1003 ¶¶ 36, 45). Petitioner argues
`that “it would have been obvious to modify Mann such that a user can
`perform non-touch gestures pursuant to Numazaki’s teachings, rather than
`the touch gestures/inputs described by Mann.” Id. at 39. Petitioner argues
`that Mann modified by Numazaki in this manner teaches the claimed
`computer adapted to perform a control function limitation. Id. at 38–42.
`The Petition relies on Numazaki for teaching a window (712) for “the
`light source and camera sensor” of the compact portable information device
`(PDA style device) in Figure 78 “which is used to detect gestures performed
`by the user such that the ‘position of a cursor 714 on the screen can be
`controlled by moving a finger 713 in front of this window 712.’” Id. at 40
`(quoting Ex. 1005, 52:5–16). Petitioner argues that Numazaki’s wristwatch
`in Figure 79 discloses a similar structure. Id. at 40–41.
`Numazaki only provides some details about the camera sensor or
`photo-detection sensor unit. See generally Ex. 1005, 50:25–54:6. However,
`Petitioner relies on Numazaki’s teaching that the light and camera
`arrangement of Figure 2 is incorporated into the eighth embodiment (which
`includes both the PDA and wristwatch style designs) for more details about
`the photo-detection sensor unit. Pet. 41–42; see also Ex. 1003 ¶ 42
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`(discussing what a PHOSITA would have understood was incorporated into
`the eighth embodiment). Thus, Petitioner argues that the PDA and
`wristwatch style designs would include “a timing control unit and difference
`calculation unit are used to capture reflected light images emanating from a
`user’s finger and isolate the appearance of the finger from other objects.”
`Pet. 41 (citing Ex. 1005, 11:20–51). Petitioner further argues that “[t]his
`information is then used by feature data generation unit 103 to determine
`gestures, pointing, etc. of the target object that may be converted into
`commands executed by a computer. Id. (citing Ex. 1005, 10:57–66).
`Based on these teachings and those further discussed in the Petition,
`we determine that the Petition sufficiently identifies how the cited art
`teaches a computer adapted to perform a control function as claimed.
`Patent Owner argues that “Numazaki does not teach or suggest
`‘wherein the computer is adapted to perform a control function of the
`handheld device based on’ the first camera output” as required by claim 1.
`Prelim. Resp. 7. Patent Owner argues that this is because Numazaki’s
`difference calculation unit compares “two images from different photo-
`detection units.” Id.
`Patent Owner does not identify why the claim should be limited to a
`computer adapted to perform the control function based on the output of
`only a single photo-detection unit or camera. Here 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. See Genentech, Inc. v. Chiron
`Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (discussing “open ended” claim
`terms, such as “comprising”). As noted by Patent Owner and Petitioner,
`Numazaki teaches that the feature data generation unit 103 determines
`gestures, pointing, etc. based on a comparison between two images. Prelim.
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`Resp. 8; Pet. 14–15. Thus, based on the current record, as one of those
`images is an output of the first camera, the noted limitation of claim 1 is
`satisfied.
`Patent Owner also argues, without further explanation that “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.” Prelim. Resp. 8. This argument fails for the same reason.
`However, claim 1 uses the term “comprising” to create an “open
`ended” claim. “‘Comprising’ is a term of art used in claim language which
`means that the named elements are essential, but other elements may be
`added and still form a construct within the scope of the claim.” Genentech,
`112 F.3d at 501. Thus, the presence of a lighting unit or other hardware is
`not excluded from the claim.
`For the above reasons, Patent Owner’s arguments do not undermine
`the showing by Petitioner that the combination of Mann and Numazaki
`teaches a computer adapted to perform a control function as claimed.
`(2) Reason to Combine
`Petitioner provides three reasons to combine the above teachings of
`Numazaki with Mann. Pet. 20–25. Patent Owner objects to all three. Prelim.
`Resp. 9–15.
`
`(a) Success in Modifying
`Petitioner argues that “a [person of ordinary skill in the art] 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. 20–21. In support
`of this argument, Petitioner cites to the Bederson Declaration testimony
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`“describing the similarities between Mann and Numazaki and concluding the
`modification would have been well within the skill set of a [person of
`ordinary skill in the art].” Id. at 21 (citing Ex. 1003 ¶ 46). Petitioner also
`cites to legal precedent for the proposition that it is “obvious to use known
`techniques to improve similar devices in the same way.” Id. (citing KSR Int’l
`Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)).
`Petitioner further explains that Mann includes “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,” while “Numazaki similarly describes PDA
`and wristwatch devices with cameras facing the user such that a user can
`perform gestures over the devices to exert control over the operation of the
`device. Id. (citing Ex. 1004, 11–13, 15; Ex. 1005, 52:5–32). Petitioner
`concludes that “[a] [person of ordinary skill in the art] would have
`recognized that [the] modif[ication] . . . would have required a
`straightforward replacement of Mann’s native user-facing imaging with
`Numazaki’s gesture-recognition hardware” and “a straightforward software
`update (i.e., adding Numazaki’s gesture detection routines).” Id. at 21–22
`(citing Ex. 1003 ¶ 46).
`Patent Owner argues that Mann’s “single user-facing camera . . . is
`drastically different than . . . [Numazaki’s] multiple photo-detection units,
`lighting unit, timing circuitry, and image subtraction circuitry,” and that
`“Mann’s single user-facing camera is not involved in Mann’s finger-based
`input control.” Prelim. Resp. 14–15. Thus, Patent Owner concludes “a
`[person of ordinary skill in the art] could not anticipate a successful
`combination” based on the similarity highlighted in the Petition. Id. at 15.
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`We do not read the Petition as equating Mann’s user-facing camera
`with Numazaki’s gesture based control system. Rather the Petition notes that
`“the requisite structure” in the form of a “cameras facing th[e] user” is
`present in Mann, so that the modification is possible based on some of the
`hardware already being present. Pet. 21. The Petition acknowledges that
`“Mann’s native user-facing imaging” would need to be replaced by
`“Numazaki’s gesture-recognition hardware” and “a straightforward software
`update.” Id. at 21–22. The Petition is also supported by declarant testimony
`stating that “the modification would have been well within the skill set of a
`[person of ordinary skill in the art].” Id. at 21 (citing Ex. 1003 ¶ 46).
`Not only does Patent Owner appear to misread the Petition, but Patent
`Owner’s assertion that “a [person of ordinary skill in the art] could not
`anticipate a successful combination” is merely unsupported attorney
`argument based on the current record. See In re Pearson, 494 F.2d 1399,
`1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
`evidence.”). Obviously, a fully developed record may change this analysis.
`Based on the above and the current record, we determine that the
`reason to combine Mann and Numazaki provided in the Petition on this basis
`is reasonable. Thus, in view of all of the analysis of claim 1 above, we
`conclude that Petitioner has demonstrated a reasonable likelihood of
`prevailing with respect to claim 1.
`(b) Less Attention
`Petitioner also argues that “a [person of ordinary skill in the art]
`would have understood that allowing a user to perform no-touch gestures
`over the user-facing camera improves the covert nature of Mann’s devices.”
`Pet. 22 (citing Ex. 1003 ¶ 47). Petitioner argues that “physically touching a .
`. . [device] in order to trigger a recording runs the risk of being noticed by
`
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`IPR2021-00923
`Patent 8,194,924 B2
`the subject” but that “finger-based no-touch gestures over the user-facing
`camera . . . would improve the covert nature of these devices” and “would
`draw much less attention.” Id.
`Patent Owner correctly notes that “[t]he Petition [and the declarant]
`fail[] 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.” Prelim. Resp. 9–10. We
`further note that though the Bederson Declaration testimony makes
`statements similar to those in the Petition, no support is provided for what
`appear to be conclusory statements. See Ex. 1003 ¶ 47. Further, the declarant
`does not identify any experience or expertise in things of a “covert nature.”
`See id. at App. A (declarant’s resume). Thus, we give the Bederson
`Declaration testimony little weight on this point.
`Patent Owner further argues that physical contact with a wristwatch or
`PDA was the normal way in which one would have expected someone to
`interact with such a device at the time of the invention. Prelim. Resp. 9.
`Patent Owner further argues that “no-touch gesture recognition . . . [is] more
`likely to intrigue the subject and draw their attention.” Id. at 9–10.
`On this record, Patent Owner’s arguments appear to have merits.
`Nevertheless, we do not need to determine whether this additional reason to
`combine by Petitioner is sufficient in light of our determination regarding
`the first reason to combine.
`Patent Owner is encouraged to resubmit its arguments in the Patent
`Owner Response. Patent Owner is cautioned that any arguments not raised
`in the Response may be deemed waived.
`
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`IPR2021-00923
`Patent 8,194,924 B2
`(c) Obstruct the User’s View
`Petitioner argues that “Mann’s native touch-based gesture control
`would have suffered from” two downsides 1) “obstructing the user’s view of
`the watch face and PDA display when the user interacts with the device;”
`and 2) decrease the “fidelity of th[e] camera” because of the contact with the
`user’s finger “due to grease and grime from the user’s finger (or require
`regular cleanings).” Pet. 22–24. Petitioner reasons that this is inevitable
`because the camera and the touch based controls are both on the watch face.
`Id.
`
`In view of these assert downsides, Petitioner argues that “Numazaki
`provides express motivation to implement Mann’s device with no-touch
`gesture functionality” because “Numazaki teaches that, by orienting the light
`and camera windows on the device to capture gestures, ‘it is possible to
`prevent the operating finger from obstructing the view of the display.’” Id. at
`22–23 (quoting Ex. 1005, 52:30–32).
`Though the Petition implies that this reasoning applies to both the
`wristwatch and PDA designs (see id. at 23 (“obstructing the user’s view of
`the watch face and PDA display”)), we note that the Petition only provides
`details with respect to Mann’s wristwatch design (id. at 23–24 (discussing
`Mann Figure 3)).
`Patent Owner argues that this reason to combine is insufficient as
`“Mann . . . suggests that an obstruction to the watch face is of little concern.”
`Prelim. Resp. 11 (citing Ex. 1004, 15).
`Patent Owner also correctly identifies that Mann’s display including
`the watch face with the touch based controls is separate from and spaced
`away from the user-facing camera. Id. at 12–14. Patent Owner argues that
`
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`IPR2021-00923
`Patent 8,194,924 B2
`this shows that that second downside identified in the Petition is not actually
`an issue. Id.
`On this record, Patent Owner’s arguments appear to have merits.
`Nevertheless, we do not need to determine whether this additional reason to
`combine by Petitioner is sufficient in light of our determination regarding
`the first reason to combine.
`Patent Owner is encouraged to resubmit its arguments in the Patent
`Owner Response. Patent Owner is cautioned that any arguments not raised
`in the Response may be deemed waived.
`(3) Conclusion for Claim 1
`For the above reasons, Patent Owner’s arguments do not undermine
`the showing by Petitioner that the combination of Mann and Numazaki
`teaches all limitations of claim 1 for purposes of this Decision.
`d) Claims 2–6, 11, 14
`Petitioner argues that the combination of Mann and Numazaki renders
`obvious dependent claims 2–6, 11, and 14. Pet. 42–49. Patent Owner does
`not contest Petitioner’s assertions regarding these claims at this stage. See
`generally Prelim. Resp. We have reviewed Petitioner’s assertions and the
`supporting evidence, and determine that Petitioner has established a
`reasonable likelihood of prevailing
`5. Obviousness over Mann, Numazaki and Amir or Aviv
`Petitioner argues that the combination of Mann, Numazaki and Amir
`renders obvious dependent claims 7, 8, 10, 12, and 13. Pet. 49–59. Petitioner
`argues that the combination of Mann, Numazaki, and Aviv renders obvious
`dependent claims 6 and 9. Id. at 59–65. Patent Owner does not separately
`address these grounds. See generally Prelim. Resp.
`
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`IPR2021-00923
`Patent 8,194,924 B2
`We have reviewed Petitioner’s assertions with respect to these claims
`and the supporting evidence, and determine that Petitioner has established a
`reasonable likelihood of prevailing.
`C. Jurisdiction over Expired Patents
`Patent Owner argues that the Board does not have jurisdiction over
`expired patents. Prelim. Resp. 18. Patent Owner argues:
`35 U.S.C. § 2(a)(1) states that the United States Patent and
`Trademark Office “shall
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