throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 27
`Entered: December 2, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC., LG ELECTRONICS, INC.,
`LG ELECTRONICS U.S.A., INC., and GOOGLE LLC,
`Petitioner,
`v.
`GESTURE TECHNOLOGY PARTNERS, LLC,
`Patent Owner.
`
`IPR2021-009231
`Patent 8,194,924 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, BRENT M. DOUGAL, and
`SCOTT RAEVSKY, Administrative Patent Judges.
`DOUGAL, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`1 IPR2022-00093 (LG Electronics, Inc. and LG Electronics U.S.A., Inc.) and
`IPR2022-00361 (Google LLC) have been joined with this proceeding.
`
`
`
`

`

`IPR2021-00923
`Patent 8,194,924 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`Applying the standard set forth in 35 U.S.C. § 314(a), we instituted an
`inter partes review challenging the patentability of claims 1–14 (“the
`challenged claims”) of U.S. Patent 8,194,924 B2 (Ex. 1001, “the ’924
`patent”). Paper 10 (“Decision” or “Dec.”). Apple Inc., filed the request for
`an inter partes review (Paper 1, “Petition” or “Pet.”), which Patent Owner,
`Gesture Technology Partners, LLC, opposed (Paper 8). We subsequently
`granted requests filed by LG Electronics, Inc., LG Electronics U.S.A., Inc.,
`and Google LLC to join this proceeding as a petitioner.2 Papers 13, 15.
`After institution, Patent Owner filed a Response (Paper 12, “PO
`Resp.”), Petitioner filed a Reply (Paper 17, “Reply”), and Patent Owner filed
`a Sur-reply (Paper 18, “Sur-reply”). An oral hearing was held on September
`14, 2022, and a copy of the transcript is in the record. Paper 26 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the
`patentability of the claims on trial. Having reviewed the arguments of the
`parties and the supporting evidence, we determine that Petitioner has not
`shown by a preponderance of the evidence that claims 1–14 are
`unpatentable.
`B. Related Matters
`The following are identified as related District Court cases: 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.,
`
`
`2 Apple Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., and Google
`LLC are referred to collectively hereinafter as “Petitioner.”
`
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`IPR2021-00923
`Patent 8,194,924 B2
`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.); Gesture Technology
`Partners, LLC v. LG Electronics, Inc., No. 6:21-cv-00123 (W.D. Tex.);
`Gesture Technology Partners, LLC v. Motorola Mobility LLC, No. 1:22-
`cv03535 (N.D. Ill); and Gesture Technology Partners, LLC v. Katherine K.
`Vidal, No. No. 1:22-cv-622 (E.D. VA). Paper 19, 1–3. Patent Owner
`identifies these related Board proceedings: IPR2021-00917; IPR2021-
`00920; IPR2021-00921; and IPR2021-00922. Paper 6, 2. Patent Owner
`identifies these related Ex Parte Reexaminations: No. 90/014,900; No.
`90/014,901; No. 90/014,902; and No. 90/014,903. Paper 19, 3–4.
`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
`“relates to simple input devices for computers, . . . and operating by optically
`sensing a human input to a display screen or other object and/or the sensing
`of human positions or orientations.” 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.
`
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`IPR2021-00923
`Patent 8,194,924 B2
`
`
`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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`IPR2021-00923
`Patent 8,194,924 B2
`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;
`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 argument.
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`IPR2021-00923
`Patent 8,194,924 B2
`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)3
`Mann,4 Numazaki5
`7, 8, 10, 12, 13
`103(a)
`Mann, Numazaki, Amir6
`6, 9
`103(a)
`Mann, Numazaki, Aviv7
`
`
`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).
`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,
`
`
`3 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.
`4 Canadian Published Patent Application 2,237,939, published Aug. 28,
`1998 (“Mann”) (Ex. 1004).
`5 U.S. Patent 6,144,366, issued Nov. 7, 2000 (“Numazaki”) (Ex. 1005).
`6 U.S. Patent 6,539,100 B1, issued Mar. 25, 2003 (“Amir”) (Ex. 1006).
`7 U.S. Patent 5,666,157, issued Sept. 9, 1997 (“Aviv”) (Ex. 1007).
`
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`Patent 8,194,924 B2
`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. PO Resp. 7.
`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. 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
`provides a number of different arguments contesting the combination of
`Mann and Numazaki. PO Resp. 7–29.
`We first give an overview of Mann. This is followed by a summary of
`Petitioner’s position and Patent Owner’s argument that Petitioner fails to
`establish that Mann is analogous art to the ’924 patent.
`a) Mann
`Mann is directed to “a personal camera with viewfinder means and a
`personal video annotation system.” Ex. 1004, Abstract. Mann states that
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`Patent 8,194,924 B2
`“[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 a second camera (150) “if the user wishes to
`make a video recording of himself/herself while recording another person
`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
`
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`Patent 8,194,924 B2
`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
`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
`
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`(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.
`b) General Overview of Petitioner’s Position for 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.
`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.
`c) Analogous Art
`Patent Owner argues that “Petitioner has failed to establish that Mann
`is analogous art [to the ’924 patent] and thus Mann cannot be used in an
`obviousness rejection.” PO Resp. 23.
`A reference qualifies as prior art for an obviousness determination
`only when it is analogous to the claimed invention. See In re Klein, 647 F.3d
`1343, 1348 (Fed. Cir. 2011). The Federal Circuit has laid out two separate
`tests to determine whether a reference is analogous art to the claimed
`invention, i.e., whether one of ordinary skill in the art would even look to the
`
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`IPR2021-00923
`Patent 8,194,924 B2
`teachings of that reference. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
`2004). They are: “(1) whether the art is from the same field of [the
`inventor’s] endeavor” and “(2) if the reference is not within the field of the
`inventor’s endeavor, whether the reference still is reasonably pertinent to the
`particular problem with which the inventor is involved.” Id.; see also In re
`Klein, 647 F.3d at 1348.
`Petitioner only addresses the first test (“field of endeavor”) and has
`thus waived any arguments related to the second test (“reasonably pertinent
`to the particular problem”).
`The Petition alleges that
`Because Mann, like the ’924 Patent, discloses a portable
`camera system that may be controlled by human gesture input,
`Mann is in the same field of endeavor as the ’924 Patent.
`Compare Mann (Ex. 1004), 1 (describing a “new photographic
`or video means and apparatus typically comprising a hand-held
`portable electronic camera system with viewfinder means and
`electronic pen-based annotation means” in the form of a PDA
`and wristwatch with a touch-based interface screen), 11, 12, 14
`(describing clock face gestures used to control device) with ’924
`Patent (Ex 1001), Abstract, 25:40-41, 25:50-63 (describing a
`“[m]ethod and apparatus . . . to enable rapid TV camera and
`computer based sensing in . . . handheld devices” used to detect
`a user’s fingers and gestures)).
`Id. at 13 (alterations in original).
`The Petition does not expressly define the field of endeavor of either
`the ’924 patent or Mann. Rather, the Petition takes the approach that because
`there is overlap in a general category of disclosure, “a portable camera
`system that may be controlled by human gesture input,” Mann and the ’924
`patent are “in the same field of endeavor.” PO Resp. 24.
`Because of this unique approach, the Petition when discussing the
`prior art references Amir and Aviv in the later obviousness grounds,
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`IPR2021-00923
`Patent 8,194,924 B2
`characterizes the disclosure differently: “the ’924 Patent, discloses a portable
`camera system that controls the operation of the device based on captured
`image information,” and “the ’924 Patent, discloses a camera system that
`controls the operation of the device based on captured image information”
`Pet. 49–50, 61 (citing Ex 1001, Abstr., 25:40–41, 25:50–63). Though these
`characterizations are similar, one requires a “portable” camera system, and
`the other is merely a “camera system.”
`In response to Patent Owner’s arguments, Petitioner simply states that
`these cited disclosures are the fields of endeavor. Reply 24. Petitioner’s
`Reply provides no further explanation or discussion. See id. For example,
`Petitioner does not explain why it is appropriate to determine that the same
`cited disclosures in the ’924 patent (Ex 1001, Abstr., 25:40–41, 25:50–63)
`define different fields of endeavor as Petitioner now asserts.8 Petitioner also
`does not acknowledge that the Petition’s characterizations of the disclosure
`of the ’924 patent with relation to Amir and Aviv does not cover Mann.
`Mann does not “disclose[] a camera system that controls the operation of the
`device based on captured image information.” See Ex. 1004; see also Pet. 13
`(citing Ex. 1004, 1, 11, 12, 14 as teaching pen-based and touch-based
`inputs).
`At the hearing, Petitioner characterized the asserted field of endeavor
`with relation to Amir and Aviv as “slightly broader” than that discussed with
`respect to Mann, and stated that they are not competing. Tr. 24. However,
`this is not the case. Petitioner’s asserted field of endeavor covering Mann
`does not require that the human gesture input be “captured image
`
`
`8 During the hearing, Petitioner acknowledged that this is not consistent with
`common practice. Tr. 23–24.
`
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`IPR2021-00923
`Patent 8,194,924 B2
`information” as it does for Amir and Aviv. On the other hand, if the field of
`endeavor of “a portable camera system that may be controlled by human
`gesture input” requires that the human gesture input be “captured image
`information,” then the field of endeavor does not cover Mann for the reason
`discussed above.
`We find that Petitioner has not satisfied its burden to show that Mann
`is analogous art to the ’924 patent. As noted above, Petitioner waived all
`arguments related to the question of “reasonably pertinent to the particular
`problem” and only addresses the “field of endeavor.” Though it may be
`sufficient to provide no or minimal analysis in the Petition concerning
`analogous art, including field of endeavor (see e.g., IPR2021-00564, Paper
`58, 24–25), Petitioner’s Reply did not provide any additional analysis as to
`why the identified field of endeavor is correct or supported by the ’924
`patent or Mann (see Reply 24). Rather, Petitioner merely asserts that its
`different characterizations of the disclosure of the ’924 patent are the field of
`endeavor for the ’924 patent. Id. As noted above, the asserted fields of
`endeavor with respect to Amir and Aviv do not cover Mann.
`Petitioner provides no analysis as to why it is appropriate to have
`different fields of endeavor all based on the same disclosure. For example,
`the Petition takes the contradictory positions that the cited portions of the
`’924 patent teach that the field of endeavor may or may not require
`“control[ of] the operation of the device based on captured image
`information.” In addition, the Petition takes the contradictory positions that
`the cited portions of the ’924 patent teach that the field of endeavor may or
`may not require “human gesture input.”
`Of the three citations to the ’924 patent relied on by Petitioner (Pet. 13
`(citing Ex 1001, Abstr., 25:40–41, 25:50–63)), none support Petitioner’s
`
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`IPR2021-00923
`Patent 8,194,924 B2
`position as to the field of endeavor of the ’924 patent—the Abstract refers to
`camera based sensing, 25:40–41 says a handheld computer includes a
`camera, and 25:50–63 describes a camera obtaining an image of many
`things, including gestures. None of these citations describe controlling a
`portable camera system by human gesture input. None of these citations
`describe controlling a camera system based on captured image information.
`Thus, even if any of Petitioner’s positions as to the field of endeavor of the
`’924 patent were correct, Petitioner provides no citations to the ’924 patent
`that support its position.
`For these reasons, Petitioner has not satisfied its burden to show that
`Mann is analogous art to the ’924 patent.
`Further, we determine that Petitioner’s identified field of endeavor for
`the ’924 patent and Mann (“a portable camera system that may be controlled
`by human gesture input”) is incorrect. Pet. 13.
`We find the evidence of record from both Petitioner and Patent Owner
`from before this dispute arose to be very informative as to the proper field of
`endeavor of the ’924 patent. Petitioner and Petitioner’s declarant both
`introduce the ’924 patent as being directed to “computer devices that
`‘optically sens[e] human input’ using one or more cameras, contemplating
`applications in a “variety of fields such as computing, gaming, medicine,
`and education.” Ex. 1003 ¶ 32 (quoting Ex. 1001, 2:7–23); Pet. 1 (identical);
`see also Paper 8, 2 (Patent Owner highlighting similar disclosure). Petitioner
`and Petitioner’s declarant then go on to describe both the embodiments of
`the ’924 patent and the claims as requiring computer devices that optically
`sense human input using one or more cameras. Ex. 1003 ¶¶ 32–34; Pet. 1–3;
`see also Paper 8, 2–5 (Patent Owner highlighting similar disclosure).
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`Petitioner highlights that during prosecution all of the claims were amended
`to require two cameras. Pet. 4–5.
`The parties’ summaries of the ’924 patent are generally consistent
`with the title, abstract, field of invention, and claims of the ’924 patent. Ex.
`1001, code (54) (“Camera based sensing . . .”), Abstr. (“TV camera and
`computer based sensing”), 2:7–23 (“optically sensing a human input”), claim
`1 (“a first camera . . . and a second camera” “perform a control function of
`the handheld device based on at least one of the first camera output and the
`second camera output”).
`From the above disclosures, as well as the ’924 patent generally, we
`agree with the parties that the ’924 patent is directed to “computer devices
`that ‘optically sens[e] human input’ using one or more cameras.” Ex. 1003
`¶ 32 (quoting Ex. 1001, 2:7–23); Pet. 1 (identical); see also Paper 8, 2
`(Patent Owner highlighting similar disclosure). Implicit in this statement is
`that the human input is used to control the computer device.
`Thus, Petitioner’s field of endeavor of “a portable camera system that
`may be controlled by human gesture input” (Pet. 13) for the ’924 patent, is
`both too narrow, “portable,” and yet also too general, “human gesture input”
`not tied to optically sensing the input with a camera. If anything, camera
`based sensing of the input is the one feature that is present in all of the noted
`sections of the ’924 patent and is highlighted by the parties. Interestingly,
`camera based sensing of the input is included in the fields of endeavor with
`respect to Amir and Aviv in the Petition, but absent without explanation in
`the first. This is a further reason why Petitioner does not satisfy it burden;
`the proper field of endeavor of the ’924 patent should include camera based
`sensing of the input.
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`Further, as previously discussed, Mann does not disclose controlling a
`computer with human gesture input that is optically sensed with a camera.
`For all of these reasons, Petitioner has not established by a
`preponderance of the evidence that Mann is analogous art to the ’924 patent.
`Nor has Petitioner established that Mann is a proper reference for use in an
`obviousness challenge.
`d) Conclusion for Claims 1–6, 11, 14
`As Petitioner has not established that Mann is a proper reference for
`use in an obviousness challenge, Petitioner has not established by a
`preponderance of the evidence that claims 1–6, 11, and 14 are obvious over
`the combination of Mann and Numazaki.
`4. 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.
`As Petitioner has not established that Mann is a proper reference for
`use in an obviousness challenge, Petitioner has not established by a
`preponderance of the evidence that claims 6–10, 12, and 13 are obvious over
`any combination involving Mann.
`C. Jurisdiction over Expired Patents
`Patent Owner argues that the USPTO does not have jurisdiction over
`expired patents. PO Resp. 1–2. Rather, Patent Owner argues, the USPTO
`only has jurisdiction over patents with claims that can be amended or
`cancelled. Id. Patent Owner states that, as explained by the Supreme Court,
`“Congress [has] significant latitude to assign [the] adjudication of public
`rights to entities other than Article III courts,” including for the USPTO to
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`“reexamine—and perhaps cancel—a patent claim in an inter partes review.”
`Id. (quoting Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC,
`138 S. Ct. 1365, 1368, 1374 (2018). However, Patent Owner argues that this
`authority does not extend to expired patents because the public franchise
`associated with an issued patent no longer exists after expiration. Id. at 2.
`Thus, it is argued, the USPTO no longer has jurisdiction, even though the
`patent owner “may be entitled to collect damages” for patent infringement,
`because “the patent owner[] no longer has the right to exclude others” and
`the USPTO has nothing to cancel or amend. Id.
`Patent Owner reasons that:
`Expiration removes the patent from the [US]PTO’s jurisdiction
`and returns it to the sole jurisdiction of the Article III courts,
`which have exclusive authority to govern claims for damages. If
`this were not so, the [US]PTO would purport to have authority
`to retroactively modify a public franchise that no longer exists,
`in a setting where the expired public franchise does not enjoy any
`presumption of validity and in which amendment of claims is no
`longer permitted.
`
`Id.
`
`Inter partes review of patents, whether expired or not, fits within the
`USPTO’s mandate “for the granting and issuing of patents” (35 U.S.C.
`§ 2(a)(1)), for as the Supreme Court has stated, “[i]nter partes review is ‘a
`second look at an earlier administrative grant of a patent’” (Oil States
`Energy Servs., 138 S. Ct. at 1374 (quoting Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144 (2016)). Our rules have also made clear that inter
`partes review covers expired patents. 37 C.F.R. 42.100(b) (2012); see also,
`e.g., 83 Fed. Reg. 51341 (Oct. 11, 2018) (Changes to the Claim Construction
`Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
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`and Appeal Board)9 (“The claim construction standard adopted in this final
`rule also is consistent with the same standard that the Office has applied in
`interpreting claims of expired patents and soon-to-be expired patents. See,
`e.g., Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279 (Fed.
`Cir. 2017) (noting that ‘[t]he Board construes claims of an expired patent in
`accordance with Phillips . . . [and] [u]nder that standard, words of a claim
`are generally given their ordinary and customary meaning’).”).
`Further, the statutes governing inter partes review do not limit them to
`non-expired patents. For example, 35 U.S.C. § 311(b), which sets forth the
`scope of inter partes review merely refers to patents, with no mention of the
`expiration date. Further, 35 U.S.C. § 311(c) entitled “Filing Deadline”
`makes no mention of the expiration date of the patent. Elsewhere, 35 U.S.C.
`§ 315 does limit the filing of IPRs based on civil actions and the serving of
`complaints, but again makes no mention of the expiration date of the patent.
`Patent Owner does not identify any statute or legal precedent that expressly
`limits inter partes review to non-expired patents.
`Patent Owner fails to adequately explain why the Patent Office’s
`authority to take a second look at an earlier administrative grant of a patent
`ends when the patent term expires even though the rights granted by the
`patent are not yet exhausted.
`For all of these reasons, we do not agree that the Board lacks
`jurisdiction over expired patents.
`
`
`
`9 Available at https://www.federalregister.gov/d/2018-22006/p-13.
`
`18
`
`

`

`IPR2021-00923
`Patent 8,194,924 B2
`
`III. CONCLUSION
`For the foregoing reasons, we determine that Petitioner has not
`proven, by a preponderance of the evidence, that the challenged claims are
`unpatentable, as summarized in the following table:
`Claims
`Shown
`Unpatentable
`
`
`35
`U.S.C. §
`
`Reference(s)
`/Basis
`
`Claims
`
`1–6, 11,
`14
`7, 8, 10,
`12, 13
`6, 9
`Overall
`Outcome
`
`
`103(a) Mann, Numazaki
`103(a) Mann, Numazaki,
`Amir
`103(a) Mann, Numazaki,
`Aviv
`
`
`
`
`
`
`
`
`Claims Not
`Shown
`Unpatentable
`1–6, 11, 14
`7, 8, 10, 12,
`13
`6, 9
`1–14
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, claims 1–14 of U.S. Patent 8,194,924 B2 have not
`been shown to be unpatentable; and
`FURTHER ORDERED that, because this is a Final Written Decision,
`parties to the proceeding seeking judicial review of the Decision must
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`
`
`
`
`
`
`
`19
`
`

`

`IPR2021-00923
`Patent 8,194,924 B2
`For PETITIONER:
`Adam Seitz
`Paul Hart
`Erise IP, P.A
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`
`Matthew D. Satchwell
`Gianni Minutoli
`Paul R. Steadman
`DLA PIPER LLP
`matthew.satchwell@dlapiper.com
`gianni.minutoli@us.dlapiper.com
`paul.steadman@dlapiper.com
`
`Erika Arner
`Daniel Cooley
`Mingji Jin
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`erika.arner@finnegan.com
`daniel.cooley@finnegan.com
`mingji.jin@finnegan.com
`
`
`PATENT OWNER:
`Todd Landis
`John Wittenzellner
`WILLIAMS SIMONS & LANDIS PLLC
`tlandis@wsltrial.com
`johnw@wsltrial.com
`
`20
`
`

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