IPR2022-00092
`Patent 8,878,949
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`LG ELECTRONICS, INC. and LG ELECTRONICS U.S.A., INC.
`
`Petitioner,
`
`v.
`
`GESTURE TECHNOLOGY PARTNERS, LLC
`
`Patent Owner
`__________________
`
`Inter Partes Review No. IPR2022-00092
`
`Patent No. 8,878,949
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO THE PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,878,949
`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)
`601 Congress Avenue, Suite 600
`Austin, TX 78701
`
`WILLIAMS SIMONS & LANDIS PLLC
`
`
`
`

`

`IPR2022-00092
`Patent 8,878,949
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`I.
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 3
`II.
`III. THE PETITION SHOULD BE DENIED BECAUSE IT DOES NOT
`ESTABLISH A REASONABLE LIKELIHOOD OF SUCCESS ON
`ANY CHALLENEGED CLAIM .................................................................... 4
`A. The ’949 Patent ....................................................................................... 4
`B. Level of Ordinary Skill in the Art .......................................................... 6
`C. Claim Construction ................................................................................. 6
`D. Ground 1 – The Combination of Numazaki and Nonaka Does Not
`Render Obvious Claims 1-18 ................................................................ 6
`1.
`Independent Claim 1 ................................................................... 6
`i.
`[1(a)] a device housing including a forward facing
`portion, the forward facing portion of the device
`housing encompassing an electro-optical sensor
`having a field of view and including a digital
`camera separate from the electro-optical sensor; ............. 6
`[1(b)] a processing unit within the device housing
`and operatively coupled to an output of the
`electro-optical sensor, wherein the processing
`unit is adapted to: determine a gesture has been
`performed in the electro-optical sensor field of
`view based on the electro-optical sensor output, ............11
`[1(c)] control the digital camera in response to the
`gesture performed in the electro-optical sensor
`field of view, wherein the gesture corresponds to
`an image capture command, and wherein the
`image capture command causes the digital
`camera to store an image to memory ..............................14
`Dependent Claim 2....................................................................18
`Dependent Claim 3....................................................................18
`Dependent Claim 4....................................................................19
`Dependent Claim 5....................................................................19
`
`2.
`3.
`4.
`5.
`
`ii.
`
`iii.
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`-ii-
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`Patent 8,878,949
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`6.
`7.
`8.
`
`ii.
`
`iii.
`
`Dependent Claim 6....................................................................20
`Dependent Claim 7....................................................................20
`Independent Claim 8 .................................................................20
`i.
`[8(a)] providing a portable device including a
`forward facing portion encompassing a digital
`camera and an electro-optical sensor, the electro-
`optical sensor having an output and defining a
`field of view; ...................................................................20
`[8(b)] determining, using a processing unit, a
`gesture has been performed in the electro-optical
`sensor field of view based on the electro-optical
`sensor output, wherein the determined gesture
`corresponds to an image capture command; and ............21
`[8(c)] capturing an image to the digital camera in
`response to the determined gesture corresponding
`to the image capture command. ......................................22
`Dependent Claim 9....................................................................23
`9.
`10. Dependent Claim 10 .................................................................23
`11. Dependent Claim 11 .................................................................23
`12. Dependent Claim 12 .................................................................24
`13.
`Independent Claim 13 ...............................................................25
`i.
`[13(a)] a device housing including a forward
`facing portion, the forwarding facing portion
`encompassing a digital camera adapted to capture
`an image and having a field of view and
`encompassing a sensor adapted to detect a
`gesture in the digital camera field of view .....................25
`[13(b)] a processing unit operatively coupled to the
`sensor and to the digital camera, wherein the
`processing unit is adapted to: detect a gesture has
`been performed in the electro-optical sensor field
`of view based on an output of the electro-optical
`sensor, and ......................................................................25
`
`ii.
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`-iii-
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`Patent 8,878,949
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`iii.
`
`[13(c)] correlate the gesture detected by the sensor
`with an image capture function and subsequently
`capture an image using the digital camera,
`wherein the detected gesture is identified by the
`processing unit apart from a plurality of gestures ..........26
`14. Dependent Claim 14 .................................................................27
`15. Dependent Claim 15 .................................................................27
`16. Dependent Claim 16 .................................................................28
`17. Dependent Claim 17 .................................................................28
`18. Dependent Claim 18 .................................................................28
`E. Ground 2 – The Combination of Numazaki, Nonaka, and Aviv Does
`Not Render Obvious Claims 6, 11, and 12.......................................... 29
`IV. BOTH THE PETITION AND PETITIONER’S JOINDER MOTION
`SHOULD BE DENIED UNDER 35 U.S.C § 314(a) ....................................30
`A. General Plastic Factors ........................................................................ 30
`B. General Plastic Factor One .................................................................. 32
`C. General Plastic Factor Two ................................................................. 34
`D. General Plastic Factor Three ............................................................... 35
`E. General Plastic Factors Four and Five ................................................. 35
`F. General Plastic Factor Six ................................................................... 36
`BOTH THE PETITION AND PETITIONER’S JOINDER MOTION
`SHOULD BE DENIED UNDER 35 U.S.C. § 315(d) ...................................38
`VI. THE PETITION SHOULD BE DENIED BECAUSE THE BOARD
`DOES NOT HAVE JURISDICTION OVER EXPIRED PATENTS ...........38
`VII. CONCLUSION ..............................................................................................40
`
`
`V.
`
`
`
`
`
`-iv-
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`IPR2022-00092
`Patent 8,878,949
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`
`
`TABLE OF AUTHORITIES
`
`Cases
`Apple Inc. v. Gesture Technology Partners, LLC,
`IPR2021-00921, Paper 1 (P.T.A.B. June 2, 2021) ...............................................33
`Apple Inc. v. Gesture Technology Partners, LLC,
`Paper 8 (P.T.A.B. Dec. 13, 2021) .........................................................................36
`Apple Inc. v. Uniloc 2017 LLC,
`IPR2020-00854, Paper 9 (P.T.A.B. Oct. 28, 2020)........................... 30, 32, 34, 37
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) .........................................................................................30
`General Plastic Indus. Co. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017) .................................... passim
`Gesture Technology Partners, LLC v. Apple Inc.,
`No. 6:21-cv-00121 (W.D. Tex. Feb. 4, 2021) ......................................................33
`Gesture Technology Partners, LLC v. LG Electronics, Inc.,
`No. 6:21-cv-00123 (W.D. Tex. Feb. 4, 2021) ......................................................33
`NetApp Inc. v. Realtime Data LLC,
`IPR2017-01195, Paper 9 (P.T.A.B. Oct. 12, 2017)..............................................33
`Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC,
`138 S. Ct. 1365 (2018) .........................................................................................38
`Valve Corp. v. Electronic Scripting Products, Inc.,
`IPR2019-00064, Paper 10 (P.T.A.B. May 1, 2019) .............................................36
`Valve Corporation v. Electronic Scripting Products, Inc.,
`IPR2019-00062, Paper 11 (P.T.A.B. April 2, 2019) ............................................33
`Statutes
`35 U.S.C. § 314(a) ........................................................................................ 3, 30, 40
`35 U.S.C. § 315(d) ............................................................................................ 38, 40
`35 U.S.C. § 316(a)(11) .............................................................................................31
`
`
`
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`-v-
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`IPR2022-00092
`Patent 8,878,949
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`I.
`
`INTRODUCTION
`
`Gesture Technology Partners, LLC (“GTP” or “Patent Owner”) respectfully
`
`submits this Preliminary Response (the “Response”) to LG Electronics, Inc.’s and
`
`LG Electronics U.S.A., Inc.’s (collectively, “LG” or “Petitioner”) Petition for Inter
`
`Partes Review (“IPR”) No. IPR2022-00092 (the “Petition” or “Pet.”) of U.S. Patent
`
`No. 8,878,949 (the “’949 Patent”). Patent Owner notes that LG has filed a motion
`
`to join IPR2021-00921 (“J.Mot.”). Paper 3.
`
`Institution should be denied because the Petition fails to demonstrate a
`
`reasonable likelihood that any challenged claim of the ’949 Patent is unpatentable.
`
`As detailed herein, the references applied by the Petition against all independent
`
`claims of the ’949 Patent have numerous glaring deficiencies, including failing to
`
`teach to suggest at least the following limitations:
`
` [1(a)]1 a device housing including a forward facing portion, the forward
`
`facing portion of the device housing encompassing an electro-optical
`
`sensor having a field of view and including a digital camera separate from
`
`the electro-optical sensor;
`
`
`1 For convenience of reference only, this Preliminary Response adopts the claim
`
`element numbering presented in the Petition.
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`-1-
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` [1(b)] a processing unit within the device housing and operatively coupled
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`IPR2022-00092
`Patent 8,878,949
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`to an output of the electro-optical sensor, wherein the processing unit is
`
`adapted to: determine a gesture has been performed in the electro-optical
`
`sensor field of view based on the electro-optical sensor output;
`
` [1(c)] control the digital camera in response to the gesture performed in
`
`the electro-optical sensor field of view, wherein the gesture corresponds to
`
`an image capture command, and wherein the image capture command
`
`causes the digital camera to store an image to memory;
`
` [8(a)] providing a portable device including a forward facing portion
`
`encompassing a digital camera and an electro-optical sensor, the electro-
`
`optical sensor having an output and defining a field of view;
`
` [8(b)] determining, using a processing unit, a gesture has been performed
`
`in the electro-optical sensor field of view based on the electro-optical
`
`sensor output, wherein the determined gesture corresponds to an image
`
`capture command;
`
` [8(c)] capturing an image to the digital camera in response to the
`
`determined gesture corresponding to the image capture command;
`
` [13(a)] a device housing including a forward facing portion, the forwarding
`
`facing portion encompassing a digital camera adapted to capture an image
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`-2-
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`

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`and having a field of view and encompassing a sensor adapted to detect a
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`IPR2022-00092
`Patent 8,878,949
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`gesture in the digital camera field of view;
`
` [13(b)] a processing unit operatively coupled to the sensor and to the
`
`digital camera, wherein the processing unit is adapted to: detect a gesture
`
`has been performed in the electro-optical sensor field of view based on an
`
`output of the electro-optical sensor; and
`
` [13(c)] correlate the gesture detected by the sensor with an image capture
`
`function and subsequently capture an image using the digital camera,
`
`wherein the detected gesture is identified by the processing unit apart from
`
`a plurality of gestures.
`
`Further, the Board should exercise its discretion under 35 U.S.C. §§ 314(a) or
`
`315(d) to deny the Petition.
`
`Further still, the Petition should be denied because the Board does not have
`
`jurisdiction over expired patents.
`
`For these reasons, institution should be denied.
`
`II.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Patent Owner requests that the Board deny institution of the Petition with
`
`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-VI of this Response.
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`-3-
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`IPR2022-00092
`Patent 8,878,949
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`III.
`
`THE PETITION SHOULD BE DENIED BECAUSE IT DOES NOT
`ESTABLISH A REASONABLE LIKELIHOOD OF SUCCESS ON ANY
`CHALLENEGED CLAIM
`
`As shown below, the Petition fails to demonstrate a reasonable likelihood that
`
`Petitioner would prevail with respect to any claim of the ’949 Patent. The Petition
`
`challenges claims 1-18 of the ’949 Patent (the “Challenged Claims”). Pet., p. 1. As
`
`detailed herein, each proposed Ground fails to disclose key limitations of each
`
`Challenged Claim. Trial should not be instituted.
`
`A.
`
`The ’949 Patent
`
`The ’949 Patent, which is entitled “Camera Based Interaction and
`
`Instruction,” claims priority to U.S. Provisional Application No. 60/133,671 filed on
`
`May 11, 1999. Ex. 1001. The ’949 Patent is directed towards methods and apparatus
`
`to “enhance the quality and usefulness of picture taking for pleasure, commercial, or
`
`other business purposes.” Id., Abstract. An example camera system is depicted in
`
`FIG. 2A, below.
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`Ex. 1001, Fig. 2A. Camera system (201) may include a central camera (202) having
`
`“high resolution and color accuracy,” one or more other cameras (210, 211) having
`
`a “lower resolution,” and light sources such as LED arrays (240, 245). Id., at 5:1-9,
`
`5:27-29. The camera system (210) also includes a computer (220) which “processes
`
`the data from cameras 210 and 211 to get various position and/or orientation data
`
`concerning” a subject to be photographed. Id., at 5:24-33, 5:45-49. One can use
`
`camera system (201) to capture an image of a subject when the “subject undertakes
`
`a particular signal comprising a position or gesture” as determined by the computer
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`(220). Id.
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`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
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`IPR2022-00092
`Patent 8,878,949
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`Petition. Pet., p. 5.
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`C. Claim Construction
`
`Except as discussed below, Patent Owner does not contest the constructions
`
`proposed in the Petition for the purpose of this response. See Pet., pp. 7-9. 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 – The Combination of Numazaki and Nonaka Does Not
`Render Obvious Claims 1-18
`
`The combination of Numazaki and Nonaka do not render obvious claims 1-
`
`18.
`
`1.
`
`Independent Claim 1
`
`The combination of Numazaki and Nonaka does not render independent claim
`
`1 obvious because it does not teach or suggest at least the following elements of
`
`independent claim 1:
`
`i.
`
`[1(a)] a device housing including a forward facing portion,
`the forward facing portion of the device housing
`encompassing an electro-optical sensor having a field of
`view and including a digital camera separate from the
`electro-optical sensor;
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`IPR2022-00092
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`
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`Claim element [1(a)] recites “a device housing including a forward facing
`
`portion, the forward facing portion of the device housing encompassing an electro-
`
`optical sensor having a field of view and including a digital camera separate from
`
`the electro-optical sensor.” The Petition contends that the laptop disclosed in the
`
`eighth embodiment of Numazaki is the claimed “device housing,” that the “reflected
`
`light extraction unit 102” is the claimed “electro-optical sensor,” and that “visible
`
`light photo-detection array 351” is the claimed “digital camera.” Pet., pp. 25-28.
`
`Both “reflected light extraction unit 102” and “visible light photo-detection array
`
`351” are disclosed in Numazaki’s fifth embodiment, while the laptop is disclosed in
`
`Numazaki’s eighth embodiment. The Petition further contends that claim element
`
`[1(a)] is met by incorporating Numazaki’s fifth embodiment into Numzaki’s eighth
`
`embodiment. Id. Patent Owner disagrees.
`
`Numazaki’s fifth embodiment discloses an information input generation
`
`apparatus as depicted in Fig. 46 below.
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`Ex. 1004, 7:4-6; Fig. 46 (annotated). As shown, the information input generation
`
`apparatus includes reflective light extraction unit (102) and visible light photo-
`
`detection array (351).
`
`Numazaki’s eight embodiment discloses a laptop as depicted in Fig. 74 below.
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`-8-
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`
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`Ex. 1004, Fig. 74 (annotated). The laptop in Numazaki’s eighth embodiment
`
`includes an information input generation apparatus. The lighting unit (701) and the
`
`photo-detection sensor unit (702) belong to the information input generation
`
`apparatus included in the laptop. Id. at 50:21-24, 29-31.
`
`To meet claim element [1(a)], the Petition argues that the information input
`
`generation apparatus in Numazaki’s laptop be the information input generation
`
`apparatus from Numazaki’s fifth embodiment with reflective light extraction unit
`
`(102) and visible light photo-detection array (351) (depicted above). Pet., pp. 25-
`
`28. However, the Petition fails to establish whether, in the alleged combination of
`
`embodiments from different portions of Numazaki, the photo-detection sensor unit
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`(702) corresponds to reflected light extraction unit (102) or visible light photo-
`
`detection array (351). See Ex. 1004, 50:29-31; Pet., pp. 25-28.
`
`Regardless of whether photo-detection sensor unit (702) corresponds to
`
`reflected light extraction unit (102) or visible light photo-detection array (351), as
`
`shown in Fig. 74, the photo-detection sensor unit (702) is located on the same
`
`upward facing portion of the laptop as the keyboard, and just “beyond the keyboard
`
`when viewed from an operator side.” Ex. 1004, 50:31-33. With this configuration,
`
`“the operator operating the keyboard can make the pointing or gesture input by
`
`slightly raising and moving the index finger” and “without hardly any shift of the
`
`hand position [relative to the keyboard].” Id. at 50:38-43. This upward facing
`
`portion of the laptop, by the unambiguous language of Numazaki, is not forward
`
`facing, as required by claim element [1(a)]. Even assuming, arguendo, that photo-
`
`detection sensor unit (702) (i.e., reflected light extraction unit (102) or visible light
`
`photo-detection array (351)) has a field of view that is forward facing, photo-
`
`detection sensor unit (702) itself is not located on a forward-facing portion of the
`
`laptop, as required by claim element [1(a)]. The Petition does not recognize this
`
`deficiency in Numazaki. See Pet., pp. 25-28. Nor does it argue that it would have
`
`been obvious to modify Numazaki to meet this claim element. See id. Accordingly,
`
`Numazaki fails to teach or suggest claim element [1(a)].
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`ii.
`
`[1(b)] a processing unit within the device housing and
`operatively coupled to an output of the electro-optical
`sensor, wherein the processing unit is adapted to:
`determine a gesture has been performed in the electro-
`optical sensor field of view based on the electro-optical
`sensor output,
`
`Claim element [1(b)] recites: “a processing unit within the device housing and
`
`operatively coupled to an output of the electro-optical sensor, wherein the processing
`
`unit is adapted to: determine a gesture has been performed in the electro-optical
`
`sensor field of view based on the electro-optical sensor output.” Claim element
`
`[1(b)] requires a processing unit be capable of “determin[ing] a gesture has been
`
`performed” based on the output of one or more electro-optical sensors. Compare
`
`claim element [1(b)] with claim element [1(a)]. The Petition contends that
`
`Numazaki teaches or suggests claim element [1(b)]. Pet., pp. 28-29. It does not.
`
`As a threshold matter, the Petition uses the term “camera units” or “sensors”
`
`to refer to what Numazaki describes as “photo-detection units.” Compare Pet., p.
`
`11 (“when the first camera unit is active and off when the second camera unit is
`
`active.”) (citing Ex. 1004, 11:20-32) with Ex. 1004, 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.”); compare Pet., p. 25 (“‘reflected
`
`light extraction unit 102’ in the fifth embodiment is the same two-sensor structure
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`-11-
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`as ‘reflected light extraction unit 102’ from the first embodiment”) (emphasis added)
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`with Ex. 1004, 11:17-18 (“reflected light extraction unit 102 has a first photo-
`
`detection unit 109 [and] a second photo-detection unit 110”). 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 unit” or “sensor” to be consistent with the disclosure
`
`of Numazaki.
`
`Numazaki requires two images from different photo-detection units to
`
`perform an analysis of a target object and identify a gesture. 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.
`
`1004, 10:57-66; 11:20-51; Fig. 2. The first photo-detection unit 109 requires that a
`
`lighting unit 101 emit light during detection. Id. at 11:26-30, Fig. 2. Later, at a
`
`different time, when 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 analyze the target
`
`object and identify a gesture. See id., 10:57-66; 11:43-56. Thus, Numazaki’s first,
`
`third, and fifth embodiments requires: (1) two, not one, images from different photo-
`
`detection units; (2) a lighting unit for illumination; (3) timing circuitry that
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`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 of a target object and identify a gesture. See Pet., pp. 10-12, 16, 19, 28-29.
`
`Numazaki requires two images from different photo-detection units to
`
`perform an analysis of a target object and identify a gesture, so it does not teach or
`
`suggest a processing unit capable of “determin[ing] a gesture has been performed”
`
`based on the output of one or more electro-optical sensors, as set forth in claim
`
`element [1(b)]. Similarly, Numazaki does not teach or suggest “determin[ing] a
`
`gesture has been performed” 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. 10-12, 16, 19, 28-29. Nor does it argue that it would have
`
`been obvious to modify Numazaki to meet this claim element. See id.
`
`Moreover, as discussed above, to meet claim element [1(a)], the Petition
`
`requires that Numazaki’s fifth embodiment be implemented in Numazaki’s eighth
`
`embodiment laptop. See claim element [1(a)], supra. In the fifth embodiment,
`
`reflected light extraction unit 102 (i.e., claimed electro-optical sensor) generates a
`
`“reflection matrix” that acts as a “mask” to perform a “chromakey” effect with a
`
`-13-
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`digital image from visible light photo-detection array 351. Ex. 1004, 39:26-31, 50-
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`60; Figs. 46, 48.
`
`The Petition now requires that Numazaki’s third embodiment also be
`
`implemented in Numazaki’s eighth embodiment laptop. Pet., pp. 28-29. In the third
`
`embodiment, reflected light extraction unit 102 (i.e., claimed electro-optical sensor)
`
`generates a “distance matrix” that is used for gesture recognition. Ex. 1004, 29:5-
`
`18, Fig. 23. Accordingly, while both the third embodiment and the fifth embodiment
`
`employ reflected light extraction unit 102, reflected light extraction unit 102 operates
`
`differently depending on the embodiment that is being implemented. To meet claim
`
`element [1(b)], the Petition requires that reflected light extraction unit 102 be
`
`modified to generate both a “reflection matrix” and a “distance matrix.” However,
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`there is no motivation for doing so. Numazaki’s third and fifth embodiments are
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`disclosed as disparate embodiments. This is only reinforced by Petition’s reliance
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`on Nonaka to purportedly teach gestures being used to trigger image capture.
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`For at least these reasons, Numazaki fails to teach or suggest claim element
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`[1(b)].
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`iii.
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`[1(c)] control the digital camera in response to the gesture
`performed in the electro-optical sensor field of view,
`wherein the gesture corresponds to an image capture
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`IPR2022-00092
`Patent 8,878,949
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`command, and wherein the image capture command
`causes the digital camera to store an image to memory
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`Claim element [1(c)] recites “control the digital camera in response to the
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`gesture performed in the electro-optical sensor field of view, wherein the gesture
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`corresponds to an image capture command, and wherein the image capture command
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`causes the digital camera to store an image to memory.” The Petition contends that
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`the combination of Numazaki and Nonaka teaches or suggests claim element [1(c)].
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`Pet., pp. 19, 20, and 29-31. It does not.
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`To meet claim element [1(c)], the Petition combines Numazaki’s third
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`embodiment, Numazaki’s fifth embodiment, and Numazaki’s eighth embodiment in
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`accordance with the teachings of Nonaka. Pet., pp. 19-21 and 29-32. Patent Owner
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`asserts there is no motivation to do so for multiple reasons.
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`First, Numazaki explicitly delineates multiple embodiments including a first
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`embodiment, a third embodiment, and a fifth embodiment. Ex. 1004, 10:21, 29:1,
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`39:3. Numazaki’s first embodiment discloses an information input generation
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`apparatus including a feature data generation unit (FDGU). Ex. 1004, 10:21-27; Fig.
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`1. Numazaki’s third embodiment discloses one implementation of the FDGU. Id.
`
`at 29:4-8 (“This third embodiment is directed to another exemplary case of the
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`[FDGU] of the first embodiment”). The third embodiment implements the FDGU
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`with a shape memory unit and a shape interpretation unit to perform gesture
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`recognition. Id. at 29:5-8; Fig. 23. Numazaki’s fifth embodiment discloses a
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`different implementation of the FDGU. Id. at 39: 17-19 (“this fifth embodiment is
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`directed to another exemplary case of the [FDGU] in the first embodiment”). The
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`fifth embodiment implements the FDGU with an extraction unit and an extracted
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`image memory unit to generate a mask for a chromakey effect. Id. at 39:19-20 and
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`50-60; Figs. 46, 48. In other words, Numazaki’s third and fifth embodiments
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`effectively disclose competing implementations for the FDGU. By virtue of being
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`competing implementations of the same component (i.e., the FDGU), Numazaki
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`teaches away from combining the third and fifth embodiments.
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`Second, the Petition contends that the motivations to combine Numazaki’s
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`third, fifth, and eighth embodiments are “a higher degree of freedom, good
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`portability, and cost benefits,” as taught by Nonaka. Pet., p. 20; Ex. 1003, ¶ 49.
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`Patent Owner disagrees. Nonaka teaches that “a higher degree of freedom, good
`
`portability, and cost benefits” result from not making a camera operable via a
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`remote-control unit. Ex. 1005, p. 2 (emphasis added). In contrast, Numazaki is
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`completely silent regarding the existence of remote-control units and the use of
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`remote-control units to operate a camera. Accordingly, the Petition’s stated
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`motivations for combining Numazaki’s embodiments correspond to solving
`
`problems (i.e., the disadvantages of a camera with a remote-control unit) that
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`Numazaki never had in the first place.
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`Third, the Petition contends that the motivation for combining Numazaki’s
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`third, fifth, and eighth embodiments is to “provide a greater degree of freedom than
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`alternative means of trigger image capture such as timers . . . ensuring the user is
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`able to get in position and prepared before the video capture begins.” Pet., pp. 20-
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`21. However, the Petition fails to explain why gesture-based image capture initiation
`
`provides “a greater degree of freedom” than timers, especially when a timer can be
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`set for any length of time, giving the user whatever time is needed to get into position
`
`and get prepared for the video capture. Id. The alleged support from the Bederson
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`declaration is conclusory, and provides no additional insight as to why gesture-based
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`image capture initiation is purportedly superior to timers. See Ex. 1003, ¶ 49.
`
`Fourth, the Petition contends that the motivation for combining Numazaki’s
`
`third, fifth, and eighth embodiments would be an anticipation of success by a
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`POSITA. Pet., pp. 22-24. Patent Owner disagrees. Even assuming, arguendo, that
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`Numazak’s disparate embodiments, when viewed in the aggregate, have all the
`
`necessary hardware, the Petition still requires that two competing embodiments (i.e.,
`
`the third and fifth embodiment) be implemented. Under such circumstances, success
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`cannot be anticipated.
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`Moreover, to show anticipation of success by a POSITA, the Petition further
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`relies on Numazaki’s teachings that gestures may be used to power on/off home
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`electronic appliances. Pet., p. 23; Ex. 1004, 31:7-10, 35-44. Patent Owner asserts
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`that merely powering-on an appliance (e.g., camera) is drastically different than
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`invoking one of the device’s many functions (e.g., image capture). Accordingly,
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`these teachings of Numazaki provide little guarantee of success for the major
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`overhaul of Numazaki being proposed by the Petition.
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`Accordingly, the combination of Numazaki and Nonaka also fails to teach or
`
`suggest claim element [1(c)]. For at least these reasons, the combination of
`
`Numazaki and Nonaka fails to render claim 1 unpatentable.
`
`2.
`
`Dependent Claim 2
`
`Dependent claim 2 recites “The portable device of claim 1 wherein the
`
`determined gesture includes a hand motion.” Claim 2 depends from and adds
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`limitations to claim 1. The combination of Numazaki and Nonaka fails to render
`
`claim 1 unpatentable, therefore, the combination of Numazaki and Nonaka fails to
`
`render dependent claim 2 unpatentable for at least the same reasons.
`
`3.
`
`Dependent Claim 3
`
`Dependent claim 3 recites “The portable device of claim 1 wherein the
`
`determined gesture includes a pose.” Claim 3 depends from and adds limit