Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 1 of 32 PageID #: 6220
`Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 1 of 32 PagelD #: 6220
`
`EXHIBIT 3
`EXHIBIT 3
`
`
`Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 1 of 32 PagelD #: 6220
`
`EXHIBIT 3
`EXHIBIT 3
`
`
`
`Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 2 of 32 PageID #: 6221
`Trials@uspto.gov
`Paper 12
`571-272-7822
`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.
`
`IPR2021-00920
`Patent 7,933,431 B2
`
`
`
`
`
`
`
`
`
`Before JONI Y. CHANG, KRISTI L. R. SAWERT, 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
`
`
`
`
`
`
`
`
`
`
`Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 3 of 32 PageID #: 6222
`IPR2021-00920
`Patent 7,933,431 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`Petitioner, Apple Inc., requests that we institute an inter partes review
`to challenge the patentability of claims 1–31 (the “challenged claims”) of
`U.S. Patent 7,933,431 B2 (Ex. 1001, “the ’431 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.”). With our authorization,
`Petitioner filed a Reply to Patent Owner’s Preliminary Response (Paper 9,
`“Reply”) and Patent Owner filed a Sur-reply (Paper 10, “Sur-reply”).
`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.
`76; Paper 6, 1–2. Patent Owner identifies these related Board proceedings:
`IPR2021-00917; IPR2021-00922; and IPR2021-00923. Paper 6, 2.
`
`
`1 Our findings and conclusions at this stage are preliminary, and thus, no
`final determinations are made.
`
`2
`
`
`
`Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 4 of 32 PageID #: 6223
`IPR2021-00920
`Patent 7,933,431 B2
`C. The ’431 Patent
`The ’431 patent “relates to simple input devices for computers,
`particularly, but not necessarily, intended for use with 3-D graphically
`intensive activities, and operating by optically sensing a human input to a
`display screen or other object and/or the sensing of human positions or
`orientations.” Ex. 1001, 2:7–11. The ’431 patent further states that it relates
`to “applications in a variety of fields such as computing, gaming, medicine,
`and education.” Id. at 2:15–17. For instance, the ’431 patent describes “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 11:54–58.
`Figure 8A, reproduced below, illustrates the control of functions via a
`handheld device.
`
`
`Figure 8A shows a perspective view of a cellular phone (800) using a laser
`spot projector (801) to project a laser spot on a detector (802) in a dashboard
`(803). Id. at 12:17–20. The ’431 patent discloses that, alternatively or in
`conjunction, round dot targets (805, 806, 807) can be sensed on the cellular
`phone (800), such as by a TV camera (815). Id. at 12:20–25.
`
`3
`
`
`
`Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 5 of 32 PageID #: 6224
`IPR2021-00920
`Patent 7,933,431 B2
`In another example, the cellular phone (800) can be used to signal a
`fax unit (824) to print data from the phone by pointing the cellular phone
`toward the fax unit. Id. at 12:42–45. TV camera (815) scans images of the
`dot targets (805, 806, 807) and a computer (830) analyzes the target images
`to determine the position and/or orientation or motion of the cellular phone
`to thereby determine if a command is being issued with movement of the
`cellular phone. Id. at 12:45–51. The computer then commands the fax unit to
`print if this action is signaled by the position, orientation, or motion of the
`cellular phone. Id. at 12:51–52.
`D. Illustrative Claim
`Petitioner challenges claims 1–31 of the ’413 patent. Claims 1, 7, and
`14 are independent. Claims 1 and 7 are illustrative:
`1. A method for controlling a handheld computing device
`comprising the steps of:
`holding said device in one hand;
`moving at least one finger in space in order to signal a
`command to said device;
`electro-optically sensing light reflected from said at least
`one finger using a sensing means associated with said device;
`determining from said sensed light the movement of said
`finger, and
`information,
`finger movement
`using said sensed
`controlling said device in accordance with said command.
`
`
`
`7. Handheld computer apparatus comprising:
`a housing;
`a camera means associated with said housing for obtaining
`an image using reflected light of at least one object positioned by
`a user operating said object;
`
`4
`
`
`
`Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 6 of 32 PageID #: 6225
`Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 6 of 32 PagelD #: 6225
`IPR2021-00920
`Patent 7,933,431 B2
`
`computer means within said housing for analyzing said
`image to determine information concerning a position or
`movementofsaid object; and
`
`means for controlling a function of said apparatus using
`said information.
`
`Ex. 1001, 25:39-S0, 25:61-26:5.
`
`A. Summary ofIssues
`
`Il. ANALYSIS
`
`In the below analysis, we first address the grounds of unpatentability.
`
`Wethen address Patent Owner’s discretionary denial and jurisdiction
`
`arguments.
`
`B. Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability (Pet. 5),
`
`supported by the declaration of Benjamin B. Bederson (Ex. 1008):
`
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`Numazaki,* Knowledge of a
`2
`>
`
`1-4, 7-9, 11-22, 25, 26, 28|103(a) PHOSITA!
`5, 6, 29
`Numazaki, DeLeeuw°
`10, 23, 24, 27
`Numazaki, DeLuca®
`
`30, 31
`
`* 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 wasfiled before March 16, 2013, we refer to
`the pre-AIAversions.
`> US. Patent 6,144,366, issued Nov. 7, 2000 (“Numazaki’”) (Ex. 1003).
`* A person having ordinary skill in the art (“PHOSITA”).
`> US. Patent 6,088,018, issued July 11, 2000 (“DeLeeuw’) (Ex. 1004).
`° US.Patent 6,064,354, issued May 16, 2000 (“DeLuca”) (Ex. 1005).
`7 US.Patent 6,243,683 B1, issued June 5, 2001 (“Peters”) (Ex. 1006).
`
`5
`
`
`
`Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 7 of 32 PageID #: 6226
`IPR2021-00920
`Patent 7,933,431 B2
`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 ’431 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. 3 (citing Ex. 1008 ¶¶ 30–32). Patent Owner does not
`dispute Petitioner’s level of ordinary skill in the art. Prelim. Resp. 5.
`
`6
`
`
`
`Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 8 of 32 PageID #: 6227
`IPR2021-00920
`Patent 7,933,431 B2
`We are persuaded, on the present record, that Petitioner’s declarant’s
`statement is consistent with the problems and solutions in the ’431 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).
`Petitioner provides a number of claim constructions. Pet. 5–12. Patent
`Owner does not contest Petitioner’s claim constructions, but does argue that
`the preambles of claims 1, 7, and 14 should be limiting. Prelim. Resp. 5–8.
`Patent Owner further argues that the Petition should have provided a
`construction for a term in claim 1. We first address each term that is
`construed by one of the parties and then address Patent Owner’s argument
`concerning the lack of a construction in the Petition. 8
`a) The Preambles
`The preambles of claims 1 and 14 both state: “A method for
`controlling a handheld computing device comprising the steps of . . .” and
`the preamble of claim 7 states: “Handheld computer apparatus comprising
`
`8 As noted below, for the purposes of institution, we accept all of Petitioner’s
`proposed constructions, as well as Patent Owner’s argument that the
`preamble are limiting. However, we invite the parties to address how these
`preliminary constructions are impacted by the District Court Claim
`Construction Memorandum and Order (Ex. 2001) which was issued after the
`pre-institution briefing was submitted.
`
`7
`
`
`
`Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 9 of 32 PageID #: 6228
`IPR2021-00920
`Patent 7,933,431 B2
`. . . .” Ex. 1001, 25:40–41, 25:61, 26:18–19. Petitioner does not address
`whether the preambles are limiting, but rather attempts to show that
`independent of whether they are limiting, the preambles are taught by the
`prior art. See e.g. Pet. 17 (“To the extent the preamble is limiting, Numazaki
`teaches . . .”).
`Patent Owner argues that the preambles should be limiting because
`they recite essential structure or steps and are “necessary to give life,
`meaning, and vitality” to the claims. Prelim. Resp. 5–6 (quoting
`Acceleration Bay, LLC v. Activision Blizzard, Inc., 908 F.3d 765, 770 (Fed.
`Cir. Nov. 6, 2018)). Specifically, Patent Owner asserts that each claim
`includes one or more limitations that refer back to the preamble’s “handheld
`computing device” or “handheld computer apparatus” for antecedent basis.
`Id. at 6–8. Patent Owner further argues that the ’413 patent discloses
`different embodiments, with some embodiments being in the form of a
`computer and some embodiments being in the form of a handheld device. Id.
`at 8 (citing Ex. 1001, 12:59–13:7, Fig. 1A). Patent Owner contends that the
`claims are directed to the latter embodiments related to a handheld device
`and, therefore, “the preamble is necessary to give life, meaning, and vitality
`to claims 1, 7, and 14, consistent with the embodiments that the inventor
`chose to claim.” Id. at 8.
`We agree that the preambles of claims 1, 7, and 14 are limiting. This
`is primarily because in the body of each claim includes “said device” or
`“said apparatus” which refers back to the preamble and is understood with
`reference thereto. For example, the last clause of claim 7 states: “means for
`controlling a function of said apparatus using said information.” Ex. 1001,
`26:4–5 (emphasis added). “Said apparatus” derives antecedent basis from
`the “[h]andheld computer apparatus” recited in the preamble. Moreover, the
`
`8
`
`
`
`Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 10 of 32 PageID #: 6229
`IPR2021-00920
`Patent 7,933,431 B2
`“means for controlling a function of said apparatus” is understood because
`of this reference to the handheld computer apparatus. The limitations of
`claims 1 and 14 are similar and so this logic applies equally to these claims
`as well. Thus, we agree that the preamble recites essential structure and is
`“necessary to give life, meaning, and vitality” to claims 1, 7, and 14.
`b) “camera means associated with said housing for obtaining an
`image using reflected light of at least one object positioned by
`a user operating said object”
`Petitioner asserts that, though claim 7 recites “camera means,” it is not
`a means-plus-function limitation under §112 ¶ 6. Pet. 6. Petitioner argues
`that “a PHOSITA would have considered ‘camera means associated with
`said housing’ to have a sufficiently definite meaning as the name for
`structure.” Id. (citing Ex. 1008 ¶ 36). Petitioner further argues that “all
`optical sensors obtain images by capturing light, so the claimed function is
`simply describing the general process that all optical sensors employ to
`obtain images of objects.” Id. (citing Ex. 1008 ¶ 36).
`As noted above, Patent Owner does not contest Petitioner’s
`constructions. Prelim. Resp. 5. For the purposes of institution, we accept
`Petitioner’s construction as consistent with the current record.
`c) “computer means within said housing for analyzing said image
`to determine information concerning a position or movement
`of said object”
`Petitioner contends that claim 7’s limitation of “computer means
`within said housing for analyzing said image to determine information
`concerning a position or movement of said object” is a means-plus-function
`limitation under §112 ¶ 6. Pet. 7. Petitioner argues that the limitation’s
`function is analyzing an image “to determine positioning or movement of an
`object.” Id. Petitioner argues that the corresponding structure “includes a
`
`9
`
`
`
`Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 11 of 32 PageID #: 6230
`IPR2021-00920
`Patent 7,933,431 B2
`computer/processor programmed (1) to identify either natural or artificial
`features on an object as described . . . or (2) to track the movement using one
`of the disclosed methods.” Id. at 9; see id. at 8–9 (discussing the disclosure
`of the ’431 patent) (citing Ex. 1001, 3:38–47, 3:57–62, 4:9–14, 5:2–23,
`6:64–7:13, 8:40–59, 11:16–35).
`Petitioner also argues that “objects” should be construed to mean
`“both separate objects held/controlled by the user and also part of the user’s
`body, such as a user’s finger or hand.” Id. at 8; see id. at 7–8 (citing Ex.
`1001, 3:39–41, 3:48–50, claims 7–8).
`As noted above, Patent Owner does not contest Petitioner’s
`constructions. Prelim. Resp. 5. For the purposes of institution, we accept
`Petitioner’s constructions as consistent with the current record.
`d) “means for controlling a function of said apparatus using said
`information”
`Petitioner argues that claim 7’s limitation of “means for controlling a
`function of said apparatus using said information” is a means-plus-function
`limitation under §112 ¶ 6. Pet. 10. According to Petitioner, the limitation’s
`function is “controlling a function of the apparatus using information about
`the object’s location or movement.” Id. Petitioner argues that the
`corresponding structure “is a processor programmed to perform the specific
`algorithms that accomplish this function” which “includes at least [the]
`Fig. 9 disclosure.” Id. at 10–11.
`As noted above, Patent Owner does not contest Petitioner’s
`constructions. Prelim. Resp. 5. However, as discussed above, we determine
`that “said apparatus” refers to the handheld computer apparatus in the
`preamble. Thus, for the purposes of institution, we accept Petitioner’s
`
`10
`
`
`
`Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 12 of 32 PageID #: 6231
`IPR2021-00920
`Patent 7,933,431 B2
`construction with the added requirement that the general purpose computer
`be a handheld computer apparatus.
`e) “means for transmitting information”
`Petitioner asserts that claim 11’s limitation of “means for transmitting
`information” is a means-plus-function limitation under §112 ¶ 6. Pet. 11.
`Petitioner argues that the ’431 patent teaches that the structure for
`performing the limitation’s function of “transmitting information” is a
`“wireless cellular transceiver” and thus the corresponding structure required
`by the claim “includes at least a wireless cellular transceiver.” Id. at 11–12
`(citing Ex. 1001, 12:59–13:3).
`As noted above, Patent Owner does not contest Petitioner’s
`constructions. Prelim. Resp. 5. For the purposes of institution, we accept
`Petitioner’s construction as consistent with the current record.
`f) “electro-optically sensing light reflected from said at least one
`finger using a sensing means associated with said device”
`Patent Owner argues that the Petition should have construed “sensing
`means” in claim 1 and that the Petition should be denied because of this
`failure. Id. at 24–25. Patent Owner argues that “[t]he Petition must identify
`how each challenged claim is to be construed” and that there are specific
`requirements “[f]or means-plus-function terms” that are not satisfied by the
`Petition for the term “sensing means.” Id. at 24 (citing 37 C.F.R. §
`42.104(b)). Patent Owner further argues that “term includes the word
`‘means,’ but Petitioner fails to identify whether the term requires
`construction under 35 U.S.C. § 112(f).” Id. at 24–25.
`However, at the same time, Patent Owner states that it “does not
`contend that the term “sensing means” requires construction under 35 U.S.C.
`§ 112(f)” (id. at 25 n.2) and that the Petition implies that ‘“camera units’ . . .
`
`11
`
`
`
`Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 13 of 32 PageID #: 6232
`IPR2021-00920
`Patent 7,933,431 B2
`correspond[] to the ‘sensing means’” (id. at 9).9 We further note that
`according to the Claim Construction Memorandum and Order in one of the
`related District Court litigations, Patent Owner expressly argued that
`“sensing means” is not a means-plus-function limitation subject to 35 U.S.C.
`§ 112(f), and the District Court agreed. Ex. 2001, 26, 28.
`As neither Petitioner nor Patent Owner argues that “sensing means” is
`a means-plus-function limitation under §112 ¶ 6, we decline to deny
`institution on the basis that Petitioner failed to satisfy the requirements of 37
`C.F.R. § 42.104(b)(3).
`4. Obviousness over Numazaki and Knowledge of a PHOSITA
`Petitioner argues that Numazaki in view of the knowledge of a person
`having ordinary skill in the art (“PHOSITA”) would have rendered obvious
`claims 1–4, 7–9, 11–22, 25, 26, and 28. Pet. 12–40. Patent Owner contends
`that Numazaki does not disclose all the limitations of claims 1, 7, 11, and 14.
`Prelim. Resp. 9–24.
`We first give an overview of the asserted prior art, 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.
`a) 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. 1003, 1:8–11.
`
`
`9 Claim 2 also requires that “at least one camera is utilized to effect said
`electro-optical sensing” implying that the sensing means is at least one
`camera. Ex. 1001, 25:51–52.
`
`12
`
`
`
`Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 14 of 32 PageID #: 6233
`IPR2021-00920
`Patent 7,933,431 B2
`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
`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.
`
`13
`
`
`
`Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 15 of 32 PageID #: 6234
`IPR2021-00920
`Patent 7,933,431 B2
`
`
`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.
`b) Claim 1
`Petitioner relies on Numazaki in view of the knowledge of a
`PHOSITA for teaching or suggesting all of the elements of claim 1. Pet. 12–
`21. For example, Petitioner relies on the portable computer with an
`information input generation device of Figure 78 for teaching the handheld
`computing device and holding the device in one hand. Id. at 17–19. For the
`remaining method steps of claim 1, Petitioner relies on Numazaki and the
`knowledge of a PHOSITA. Id. at 19–21. In particular, the Petition relies on
`the teaching of a window (712) for “the lighting unit and the photo-detection
`
`14
`
`
`
`Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 16 of 32 PageID #: 6235
`IPR2021-00920
`Patent 7,933,431 B2
`sensor unit” of Numazaki Figure 78 “which enables the ‘position of a cursor
`714 on the screen [to] be controlled by moving a finger 713 in front of this
`window 712.’” Id. at 19 (quoting Ex. 1003, 52:5–16); see also id. at 20–21.
`Petitioner argues that “[a] PHOSITA would have understood that controlling
`a cursor on the handheld device is signaling a command.” Id. (citing Ex.
`1008 ¶¶ 46–47).
`Numazaki only provides some details about the photo-detection
`sensor unit. See generally Ex. 1003, 50:25–54:6. However, Petitioner relies
`on Numazaki’s teaching that “light and camera arrangement” of Figure 2 “is
`incorporated into the eighth embodiment” for more details about the photo-
`detection sensor unit. Pet. 20; see also id. at 15–16 (citing Ex. 1008 ¶ 44)
`(discussing what a PHOSITA would have understood was incorporated into
`the eighth embodiment). Petitioner describes Numazaki as teaching a system
`where two images are obtained of the target object by two different cameras,
`one with the lighting unit on and one with it off. Id. at 12–14 (citing Ex.
`1003, 11:20–39, Fig. 2). The images are compared to obtain certain
`information. Id. at 14 (citing Ex. 1003, 11:43–51). Petitioner concludes that
`the obtained “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” and that this all reads on the
`electro-optically sensing, determining, and using steps of claim 1. Id. at 20–
`21.
`
`We determine that the Petition has sufficiently shown at this stage
`how Numazaki and the knowledge of a PHOSITA would have suggested all
`of the features of claim 1. Patent Owner argues that Numazaki does not
`teach or suggest aspects of the electro-optically sensing and determining
`
`15
`
`
`
`Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 17 of 32 PageID #: 6236
`IPR2021-00920
`Patent 7,933,431 B2
`steps of claim 1. Prelim. Resp. 9–11. We address Patent Owner’s argument
`below.
`
`(1) Electro-optically sensing and determining
`Claim 1 requires “electro-optically sensing light reflected from said at
`least one finger using a sensing means associated with said device;
`determining from said sensed light the movement of said finger.” Ex. 1001,
`25:44–48.
`Patent Owner argues that “Numazaki requires two photo-detection
`units to perform an analysis of a target object and control the computer, so it
`does not teach or suggest ‘determining’ finger movement from reflected
`light that is ‘electro-optically’ sensed using one ‘sensor means,’ as set forth
`in [the] claim.” Prelim. Resp. 11.
`Patent Owner does not identify why the claim should be limited to one
`sensor means or camera. Though the claim refers to “electro-optically
`sensing light . . . using a sensing means” and “determining from said sensed
`light,” this does not limit the claim, at least on this record, to only one
`camera. Unless a more limited construction is indicated by the specification
`or prosecution history, the indefinite article “a” or “an” is construed in a
`claim to mean “one or more.” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d
`1351, 1356 (Fed. Cir. Aug. 18, 2000). Thus, “a sensing means,” based on the
`current record, appears to encompass one or more cameras.
`Patent Owner also argues that “Numazaki does not teach or suggest
`‘determining’ finger movement 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. 11.
`However, claim 1 uses the term “comprising” to create an “open
`ended” claim. “‘Comprising’ is a term of art used in claim language which
`
`16
`
`
`
`Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 18 of 32 PageID #: 6237
`IPR2021-00920
`Patent 7,933,431 B2
`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,
`Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). Thus, the presence
`of a lighting unit or other hardware is not excluded from the claim. Rather,
`the ’431 patent teaches the use of LEDs “to illuminate [associated] targets.”
`Ex. 1001, 3:34–35.
`The claimed phrase “electro-optically sensing light . . . using a sensing
`means” does require “a sensing means,” such as a camera, be used in the
`step. However, it does not prohibit other hardware from being involved. For
`example, the claim does not say “electro-optically sensing light . . . using
`only a sensing means.” Thus, the fact that “Numazaki identifies as necessary
`. . . the image-subtraction circuitry and associated timing circuitry” does not
`prevent Numazaki from teaching or suggesting the limitations of open-ended
`claim 1.
`For the above reasons, Patent Owner’s arguments do not undermine
`the showing by Petitioner that Numazaki and the knowledge of a PHOSITA
`teaches all of the aspects of claim 1 for purposes of this Decision.
`c) Claim 7
`Independent claim 7 is directed to a handheld computer apparatus and
`is similar to method claim 1. Compare Ex. 1001, 25:61–26:5 with id. at
`25:40–50. As such, the Petition relies on the essentially the same teachings
`of Numazaki discussed above with respect to claim 1 for the features of
`claim 7, which we agree with for purposes of this Decision for the reasons
`explained above. See Pet. 26–31.
`Patent Owner argues that “Numazaki does not teach or suggest one
`optical image sensor (i.e., one camera means) to obtain an image” as
`required by claim 7. Id. at 13. However, Patent Owner does not identify why
`
`17
`
`
`
`Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 19 of 32 PageID #: 6238
`IPR2021-00920
`Patent 7,933,431 B2
`claim 7 should be limited to one optical image sensor. As noted above,
`Petitioner construes “camera means” as an optical sensor (Pet. 6), which
`Patent Owner does not contest (Prelim. Resp. 5). Though the claim refers to
`“a camera means . . . for obtaining an image,” this does not limit the claim,
`at least on this record, to only one optical sensor. Unless a more limited
`construction is indicated by the specification or prosecution history, the
`indefinite article “a” or “an” is construed in a claim to mean “one or more.”
`KCJ Corp., 223 F.3d at 1356. Thus, “a camera means,” based on the current
`record, appears to encompass one or more optical sensors.
`Patent Owner also argues that the computer means of claim 7 should
`be limited to analyzing a single image taken by a single camera and that the
`two camera and two image system of Numazaki does not satisfy this
`limitation. Prelim. Resp. 13–15. Based on the current record, we determine
`that the claim is not so limited.
`As noted above, we determine that “a camera means,” based on the
`current record, appears to encompass one or more optical sensors. Similarly,
`the limitation “an image” appears to encompass one or more images for the
`same reason. We see no limitations in claim 7 which would require the
`camera means or image obtained by the camera means to be limited to a
`single camera means or a single image.
`Patent Owner also argues that the “alleged ‘computer means’ taught
`by Numazaki cannot analyze a target object absent the other hardware that
`Numazaki identifies as necessary, such as the lighting unit, the image
`subtraction circuitry, and the associated timing circuitry.” Id. at 15.
`Concerning the lighting unit, claim 7 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
`
`18
`
`
`
`Case 2:21-cv-00040-JRG Document 157-3 Filed 12/16/21 Page 20 of 32 PageID #: 6239
`IPR2021-00920
`Patent 7,933,431 B2
`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 is
`not excluded from the claim. Rather, the ’431 patent teaches the use of LEDs
`“to illuminate [associated] targets” and claim 12, which depends from claim
`7, expressly requires “a light source for illuminating said object.” Ex. 1001,
`3:34–35, 26:14–15.
`Concerning the image subtraction circuitry, and the timing circuitry, it
`is not clear why this is not within the meaning of the claimed computer
`means. The Petition construes the corresponding structure for the computer
`means as “a computer/processor programmed to identify natural features on
`an object so as to determine the object’s position.” Pet. 29; id. at 7–9. The
`Petition then identifies how the system of Numazaki teaches a similar
`structure. Id. at 29–30. We agree, based on the current record, that Numazaki
`teaches a computer/processor programmed to identify natural features on an
`object so as to determine the object’s position. Thus, without more, Patent
`Owner’s broad assertion, that Numazaki’s structure is insufficient or that the
`structure requires only a single camera or a single image, does not
`undermine the showing in the Petition at this stage.
`Thus, we determine that the Petition has established a reasonable
`likelihood of success with respect to claim 7.
`d) Claim 11
`Dependent claim 11 recites “Apparatus according to claim 7, further
`including means for transmitting information.” Ex. 1001, 26:12–13. As
`noted previously, Petitioner
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
