Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 1 of 29 PageID #: 6279
`Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 1 of 29 PagelD #: 6279
`
`EXHIBIT 5
`EXHIBIT 5
`
`

`

`Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 2 of 29 PageID #: 6280
`Trials@uspto.gov
`Paper 8
`571-272-7822
`Entered: December 13, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`GESTURE TECHNOLOGY PARTNERS, LLC,
`Patent Owner.
`
`IPR2021-00921
`Patent 8,878,949 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, GREGG I. ANDERSON, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`SCANLON, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

`

`Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 3 of 29 PageID #: 6281
`IPR2021-00921
`Patent 8,878,949 B2
`
`I.
`INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`an inter partes review of claims 1–18 of U.S. Patent No. 8,878,949 B2
`(Ex. 1001, “the ’949 patent”). Gesture Technology Partners, LLC (“Patent
`Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). To
`institute an inter partes review, we must determine that the information
`presented in the Petition shows “a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine
`that the information presented in the Petition establishes a reasonable
`likelihood that Petitioner will prevail with respect to at least one challenged
`claim. Accordingly, an inter partes review is hereby instituted.
`II. BACKGROUND
`A. Real Parties in Interest
`Petitioner identifies itself as the real party in interest. Pet. 65. Patent
`Owner identifies itself as the real party in interest. Paper 4, 1.
`B. Related Matters
`The parties identify the following proceedings as related matters
`involving the ’949 patent: 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. Huawei Device Co., Ltd., No. 2:21-cv-
`00040 (E.D. Tex.); and Gesture Technology Partners, LLC v. Samsung
`Electronics Co., Ltd., No. 2:21-cv-00041 (E.D. Tex.). Pet. 65; Paper 4, 1.
`
`2
`
`

`

`Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 4 of 29 PageID #: 6282
`IPR2021-00921
`Patent 8,878,949 B2
`In addition, Patent Owner identifies the following inter partes review
`proceedings as related matters: IPR2021-00917; IPR2021-00920; IPR2021-
`00922; and IPR2021-00923. Paper 4, 2.
`C. The ’949 Patent
`The ’949 patent, titled “Camera Based Interaction and Instruction,”
`issued November 4, 2014, with claims 1–18. Ex. 1001, codes (45), (54),
`15:21–16:50. The ’949 patent relates to “enhanc[ing] the quality and
`usefulness of picture taking for pleasure, commercial, or other business
`purposes.” Id. at 1:4–6. In one embodiment, “stereo photogrammetry is
`combined with digital image acquisition to acquire or store scenes and poses
`of interest, and/or to interact with the subject in order to provide data to or
`from a computer.” Id. at 1:6–10.
`Figure 2A of the ’949 patent is reproduced below.
`
`
`
`3
`
`

`

`Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 5 of 29 PageID #: 6283
`IPR2021-00921
`Patent 8,878,949 B2
`Figure 2A illustrates still camera system 201, which includes central camera
`202 having high resolution and color accuracy for picture taking. Id.
`at 4:66–5:2. Camera system 201 also includes two cameras 210, 211 on
`either side of central camera 202. Id. at 5:2–3. Cameras 210, 211 “may be
`lower resolution (allowing lower cost, and higher frame rate, as they have
`less pixels to scan in a given frame time), with little or no accurate color
`capability, as they are used to simply see object positions or special datum
`positions on objects.” Id. at 5:3–7.
`Camera system 201 further includes computer 220 that processes data
`from cameras 210, 211 “to get various position and/or orientation data
`concerning a person.” Id. at 5:24–26. “In general, one can use the system to
`automatically ‘shoot’ pictures” in response to a particular event, such as the
`subject undertaking a particular position or gesture—i.e., a silent command
`to take a picture. Id. at 5:30–49.
`D. Challenged Claims
`As noted above, Petitioner challenges claims 1–18 of the ’949 patent.
`Claims 1, 8, and 13 are independent. Claim 1 is illustrative of the claimed
`subject matter and is reproduced below:
`1. A portable device comprising:
`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; and
`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:
`
`4
`
`

`

`Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 6 of 29 PageID #: 6284
`Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 6 of 29 PagelD #: 6284
`IPR2021-00921
`Patent 8,878,949 B2
`
`determine a gesture has been performedin the electro-
`optical sensor field of view based onthe electro-optical
`sensor output, and
`
`control the digital camera in responseto the gesture
`performedin the electro-optical sensorfield of view,
`wherein the gesture corresponds to an image capture
`command, and wherein the image capture command
`causesthe digital camera to store an image to memory.
`
`Ex. 1001, 15:21-38.
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner contendsthat the challenged claims would have been
`
`unpatentable on the following grounds:!
`
`
`
`Claim(s) Challenged|35 U.S.C. § Reference(s)/Basis
`
` Numazaki,? Nonaka?
`
`103(a
`
`Numazaki, Nonaka, Aviv*
`
`Pet. 6—7. Petitioner supports its challenge with the Declaration of
`
`Dr. Benjamin B. Bederson (Ex. 1003).
`
`Il. ANALYSIS
`
`A. Level ofOrdinary Skill in the Art
`
`In determining whether an invention would have been obviousat the
`
`time it was made, 35 U.S.C. § 103 requires us to resolve the level of
`
`ordinary skill in the pertinentart at the time of the effective filing date of the
`
`claimed invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The
`
`' The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’949 patent has an
`effective filing date before the March 16, 2013, effective date of the
`applicable AIA amendments, we apply the pre-AIA version of 35 U.S.C.
`§ 103.
`7 US 6,144,366, issued Nov. 7, 2000 (Ex. 1004).
`> JP H4-73631, published Mar. 9, 1992 (Ex. 1005).
`* US 5,666,157, issued Sept. 9, 1997 (Ex. 1006).
`
`5
`
`

`

`Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 7 of 29 PageID #: 6285
`IPR2021-00921
`Patent 8,878,949 B2
`person of ordinary skill in the art is a hypothetical person who is presumed
`to have known the relevant art. In re GPAC, Inc., 57 F.3d 1573, 1579
`(Fed. Cir. 1995). Factors that may be considered in determining the level of
`ordinary skill in the art include, but are not limited to, the types of problems
`encountered in the art, the sophistication of the technology, and educational
`level of active workers in the field. Id. In a given case, one or more factors
`may predominate. Id.
`Petitioner contends that a person having ordinary skill in the art
`“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 “[a]dditional education or experience might
`substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31).
`Patent Owner does not dispute Petitioner’s definition for the purposes of its
`Preliminary Response. Prelim. Resp. 5.
`Based on our review of the record before us, we determine that
`Petitioner’s stated level of ordinary skill in the art is reasonable because it is
`consistent with the evidence of record, including the asserted prior art.
`Accordingly, for the purposes of this Decision, we adopt Petitioner’s
`definition.
`
`B. Claim Construction
`In inter partes reviews, the Board interprets claim language using the
`district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2020). Under
`that standard, we generally give claim terms their ordinary and customary
`meaning, as would be understood by a person of ordinary skill in the art at
`the time of the invention, in light of the language of the claims, the
`specification, and the prosecution history. See Phillips, 415 F.3d at
`
`6
`
`

`

`Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 8 of 29 PageID #: 6286
`IPR2021-00921
`Patent 8,878,949 B2
`1313–14. Although extrinsic evidence, when available, may also be useful
`when construing claim terms under this standard, extrinsic evidence should
`be considered in the context of the intrinsic evidence. See id. at 1317–19.
`Petitioner proposes claim constructions for the phrases “the image
`capture command causes the digital camera to store an image to memory” in
`claim 1, “capturing an image to the digital camera in response to . . . the
`image capture command” in claim 8, and “correlate the gesture detected
`. . . with an image capture function and subsequently capture an image using
`the digital camera” in claim 13. Pet. 8. Specifically, Petitioner asserts that
`these phrases “should be construed broadly enough to encompass
`capturing/storing video or still images,” and provides reasons supporting its
`assertion. Id. at 8–10. Patent Owner does not contest Petitioner’s proposed
`claim constructions at this stage of the proceeding. Prelim. Resp. 5.
`Accordingly, we adopt Petitioner’s proposed claim constructions for the
`purposes of this Decision.
`The parties are hereby given notice that claim construction, in general,
`is an issue to be addressed at trial and claim constructions expressly or
`implicitly addressed in this Decision are preliminary in nature. Claim
`construction will be determined at the close of all the evidence and after any
`hearing. The parties are expected to assert all of their claim construction
`arguments and evidence in the Petition, Patent Owner’s Response,
`Petitioner’s Reply, Patent Owner’s Sur-reply, or otherwise during trial, as
`permitted by our rules.
`C. Asserted Obviousness Based on Numazaki and Nonaka
`Petitioner asserts that claims 1–18 of the ’949 patent are unpatentable
`under 35 U.S.C. § 103(a) based on Numazaki and Nonaka. Pet. 10–49.
`Patent Owner provides arguments addressing this asserted ground of
`
`7
`
`

`

`Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 9 of 29 PageID #: 6287
`IPR2021-00921
`Patent 8,878,949 B2
`unpatentability. Prelim. Resp. 6–28. We first summarize the references and
`then address the parties’ contentions.
`1. 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. 1007, 1:8–11. An information
`input generation apparatus according to a first embodiment includes lighting
`unit 101, reflected light extraction unit 102, feature data generation unit 103,
`and timing signal generation unit 104. Id. at 10:23–28, Fig. 1. Light
`emitting unit 101 emits light that varies in intensity in time according to a
`timing signal from 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 reflected light extraction unit 102. Id. at 10:31–35. Feature
`data generation unit 103 extracts feature data from the reflected light image.
`Id. at 10:57–58. “When the target object is a hand, it becomes possible to
`obtain the information regarding a gesture or a pointing according to the
`feature data extracted from the reflected light image of the hand, for
`example, and it becomes possible to operate a computer by using this
`obtained information.” Id. at 10:61–66.
`Figure 2, reproduced below, depicts a detailed block diagram of the
`information input generation apparatus of the first embodiment. Id. at 5:11–
`12, 11:9–11.
`
`8
`
`

`

`Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 10 of 29 PageID #: 6288
`IPR2021-00921
`Patent 8,878,949 B2
`
`
`Figure 2 shows that light emitted from lighting unit 101 is reflected by target
`object 106, such that an image is formed on a photo-detection plane of
`reflected light extraction unit 102. Id. at 11:11–14. Reflected light
`extraction unit 102 includes first photo-detection unit 109, second photo-
`detection unit 110, and difference calculation unit 111. Id. at 11:16–19.
`Timing control unit 112 causes lighting unit 101 to emit light when first
`photo-detection unit 109 is in a photo-detecting state and not to emit light
`when second photo-detection unit 110 is in a photo-detecting state. Id.
`at 11:26–32. Accordingly, first photo-detection unit 109 receives the light
`emitted from lighting unit 101 that is reflected by target object 106 and
`external light, such as illumination light or sunlight, but second photo-
`detection unit 110 receives the external light only. Id. at 11:33–39.
`Difference calculation unit 111 calculates and outputs the difference
`between the image detected by first photo-detection unit 109 and the image
`detected by second photo-detection unit 110, which difference corresponds
`to the light emitted from lighting unit 101 that is reflected by target object
`106. Id. at 11:43–55. The output from reflected light extraction unit 102 is
`
`9
`
`

`

`Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 11 of 29 PageID #: 6289
`IPR2021-00921
`Patent 8,878,949 B2
`amplified by amplifier 113, converted from analog signals into digital
`signals by analog-to-digital converter 114, and stored at memory 115. Id. at
`11:61–64. At an appropriate time, the data stored in memory 115 is read out
`and processed by feature data generation unit 103. Id. at 11:64–66.
`Numazaki also discloses a third embodiment that “is directed to
`another exemplary case of the feature data generation unit of the first
`embodiment, which realizes a gesture camera for recognizing the hand
`action easily and its application as a pointing device in the three-dimensional
`space.” Id. at 29:4–8. Figure 23, reproduced below, shows the feature data
`generation unit of the third embodiment. Id. at 6:4–6, 29:9–10.
`
`
`Figure 23 shows that the feature data generation unit includes range image
`memory unit 331 for storing a distance matrix, shape memory unit 332 for
`storing shape interpretation rules, and shape interpretation unit 333 for
`interpreting a shape of the distance matrix according to the shape
`interpretation rules. Id. at 29:11–18. Shape interpretation unit 333 performs
`the processing for determining if a matching shape interpretation rule exists.
`Id. at 29:28–38, Fig. 25. When a matching shape is found, a command
`corresponding to that shape is outputted. Id. at 30:2–3. Thus, this
`
`10
`
`

`

`Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 12 of 29 PageID #: 6290
`IPR2021-00921
`Patent 8,878,949 B2
`embodiment uses hand gesture recognition as a trigger for inputting a
`command into a computer and can also be used to power on and off a device
`such as a TV or lighting equipment. Id. at 31:3–10.
`In addition, Numazaki discloses a fifth embodiment that “is directed
`to another exemplary case of the feature data generation unit in the first
`embodiment” that uses a video compression technique that extracts only
`useful image information to lower communications costs. Id. at 39:6–20.
`Figure 46, reproduced below, shows the feature data generation unit
`according to the fifth embodiment. Id. at 7:4–6, 39:21–23.
`
`
`
`Figure 46 shows feature data generation unit 103 in conjunction with
`reflected light extraction unit 102 and visible light photo-detection array
`351, which is generally a CCD camera for taking video images. Id. at
`39:24–41. Images captured by visible light photo-detection array 351 are
`stored in image memory unit 352, and a mask (i.e., the image detected by
`reflected light extraction unit 102) is stored in range image memory unit
`
`11
`
`

`

`Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 13 of 29 PageID #: 6291
`IPR2021-00921
`Patent 8,878,949 B2
`331. Id. at 39:51–57. Extraction unit 353 superposes the original image and
`the mask, leaving only the overlapping portion. Id. at 39:57–59.
`Numazaki also discloses an eighth embodiment that “is directed to a
`system configuration incorporating the information input generation
`apparatus” described in the previous embodiments. Id. at 50:21–24. Figure
`74, reproduced below, shows a computer equipped with the information
`input generation apparatus. Id. at 8:31–34, 50:25–26.
`
`
`Figure 74 depicts a portable computer having a keyboard and a display
`integrated with the computer body. Id. at 50:26–29. Lighting unit 701 and
`photo-detection sensor unit 702 are positioned beyond the keyboard. Id.
`at 50:30–33.
`
`2. Nonaka
`Nonaka relates to a camera equipped with a remote release device.
`Ex. 1005, 2:1–3. In one embodiment, a “photographer gives a release
`instruction by means of a predetermined motion towards the camera in
`conjunction with the display timing of the aforementioned display patterns,
`the distance measurement device . . . detects this motion by the subject . . . ,
`
`12
`
`

`

`Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 14 of 29 PageID #: 6292
`IPR2021-00921
`Patent 8,878,949 B2
`and [an] exposure is carried out.” Id. at 3:35–38. Nonaka describes that an
`objective of this invention is to provide “a remote release device-equipped
`camera which enables remote release operations without using a transmitter
`or receiver to give a release instruction, thereby achieving a higher degree of
`freedom, good portability, and cost benefits.” Id. at 2:26–29.
`3. Independent Claim 1
`Petitioner contends that the proposed combination of Numazaki and
`Nonaka discloses the limitations of challenged claim 1. Pet. 10–33. In
`particular, Petitioner relies on: (1) Numazaki’s first embodiment as teaching
`using the reflected light extraction unit to detect an object such as a user’s
`hand; (2) Numazaki’s third embodiment as teaching detecting when the user
`has performed a pre-registered gesture by comparing the output of the
`reflected light extraction unit to stored data reflecting pre-registered gestures
`or hand positions and instructing the device to implement a command
`corresponding to the gesture; (3) Numazaki’s fifth embodiment as teaching
`taking video images with visible light photo-detection array 351; and
`(4) Numazaki’s eighth embodiment as teaching portable devices that
`implement the information input generation apparatus described in the other
`embodiments. Id. at 20 (citing Ex. 1004, 4:32–35, 29:19–30:5, 31:3–10,
`39:21–60, 50:19–24). Regarding these embodiments, Petitioner argues that,
`[a]lthough Numazaki does not expressly describe combining all
`these features into a single portable device such that a user
`could perform a gesture command (pursuant to its third
`embodiment) that causes video capture to initiate (pursuant to
`its fifth embodiment), a [person having ordinary skill in the art]
`would have been motivated to implement Numazaki’s portable
`device in this manner pursuant to Nonaka’s image capture
`command gesture teachings.
`
`13
`
`

`

`Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 15 of 29 PageID #: 6293
`IPR2021-00921
`Patent 8,878,949 B2
`Id. at 20–21. For example, Petitioner argues that combining Numazaki’s
`embodiments as proposed would have improved Numazaki’s portable
`devices in the same way that Nonaka’s gesture-based image capture
`functionality benefits its camera device. Id. at 21 (citing Ex. 1003 ¶¶ 48–49;
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). That is, Petitioner
`argues that Nonaka’s “gesture-based image capture solution ‘achiev[es] a
`higher degree of freedom, good portability, and cost benefits,’” and one of
`ordinary skill in the art “would have recognized that these same benefits
`would be realized in Numazaki’s laptop.” Id. (citing Ex. 1006, 2:26–29)
`(alteration in original). Petitioner also identifies certain passages in
`Numazaki and explains the significance of each passage with respect to the
`corresponding claim limitation. Id. at 25–33.
`Patent Owner argues that Petitioner has failed to show that the cited
`references disclose certain limitations of claim 1 and has failed to provide
`sufficient reasoning to combine the references. Prelim. Resp. 6–17. We
`address Patent Owner’s arguments in turn.
`a) Limitation [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”
`Patent Owner argues that the combination of Numazaki and Nonaka
`does not teach or suggest limitation [1(a)]. Prelim. Resp. 6. Specifically,
`Patent Owner argues that Petitioner contends that this limitation is met by
`incorporating Numazaki’s fifth embodiment into Numazaki’s eighth
`embodiment, wherein the laptop of the eighth embodiment is the claimed
`“device housing,” and reflected light extraction unit 102 and visible light
`photo-detection array 351 of the fifth embodiment correspond to the claimed
`“electro-optical sensor” and “digital camera,” respectively. Id. at 6–7 (citing
`
`14
`
`

`

`Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 16 of 29 PageID #: 6294
`IPR2021-00921
`Patent 8,878,949 B2
`Pet. 26–28). According to Patent Owner, however, photo-detection sensor
`unit 702 of the eighth embodiment (which Patent Owner contends
`corresponds to reflected light extraction unit 102 or visible photo-detection
`array 351 in the proposed combination) “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.’” Id. at 9 (quoting Ex. 1004, 50:31–33).
`Patent Owner further argues that this upward facing portion of the laptop is
`not forward facing and, even if photo-detection sensor unit 702 has a
`forward-facing field of view, it is not located on a forward-facing portion of
`the laptop. Id.
`We do not agree with Patent Owner’s argument. Petitioner argues
`that one of ordinary skill in the art would have been motivated to implement
`the videoconference functionality of Numazaki’s fifth embodiment into the
`laptop of the eighth embodiment. Pet. 26. To accomplish this
`implementation, Petitioner argues that Numazaki’s two-camera reflected
`light extraction unit 102 would have been used in conjunction with visible
`photo-detection array 351. Id. at 26–27 (citing Ex. 1004, 39:21–49).
`Petitioner also argues that, because the output of reflected light extraction
`unit 102 is processed to define which portions of the video captured by
`visible photo-detection array 351 are retained, one of ordinary skill in the art
`would have understood that both reflected light extraction unit 102 and
`visible photo-detection array 351 are forward facing. Id. at 27–28 (citing
`Ex. 1004, 39:24–60, Fig. 48; Ex. 1003 ¶ 52).
`As such, we do not read the Petition as asserting that either reflected
`light extraction unit 102 or visible photo-detection array 351 physically
`replaces photo-detection sensor unit 702. Instead, as discussed above,
`Petitioner relies on the fifth embodiment’s disclosure of using forward-facing
`
`15
`
`

`

`Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 17 of 29 PageID #: 6295
`IPR2021-00921
`Patent 8,878,949 B2
`reflected light extraction unit 102 and visible photo-detection array 351
`together. The test for obviousness is not whether the features of one
`embodiment may be bodily incorporated into another embodiment to
`produce the claimed subject matter; rather, it is what the combination of
`embodiments makes obvious to one of ordinary skill in the art. See In re
`Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a
`determination of obviousness based on teachings from multiple references
`does not require an actual, physical substitution of elements.”).
`Furthermore, neither party has offered an express construction for the
`claim term “forward facing portion,” and we do not agree, based on the
`current record, that the portion of Numazaki’s laptop encompassing photo-
`detection sensor unit 702 cannot be considered as “forward facing.” Indeed,
`Figure 74 depicts this portion of the laptop to be slanted and facing both
`upward and forward. We, thus, are persuaded at this preliminary stage that
`Numazaki’s laptop includes a forward-facing portion that includes photo-
`detection sensor unit 702. We invite the parties to brief the proper
`construction of “forward facing portion” during trial, if desired, and we will
`address this limitation on the complete trial record, including any claim
`construction analysis for the term “forward facing portion,” to the extent
`included in the record.
`b) Limitation [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”
`First, Patent Owner argues that Numazaki requires two, not one,
`images from different photo-detection units to perform an analysis of a
`target object and identify a gesture. Prelim. Resp. 10–11. Accordingly,
`
`16
`
`

`

`Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 18 of 29 PageID #: 6296
`IPR2021-00921
`Patent 8,878,949 B2
`Patent Owner argues that Numazaki “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)].”5 Id. at 12 (alteration in original). Patent Owner also argues that
`“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.” Id. (alteration in original).
`These arguments are not persuasive because claim 1 employs the
`open-ended language “comprising,” and thus does not preclude additional
`elements. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir.
`1997) (discussing “open ended” claim terms, such as “comprising”).
`Specifically, claim 1 does preclude determining that a gesture has been
`performed based on the output of more than one electro-optical sensor. Nor
`does claim 1 preclude additional hardware such as a lighting unit, image-
`subtraction circuitry, and timing circuitry.
`Second, Patent Owner argues that the Petition requires that both of
`Numazaki’s third and fifth embodiments are implemented into the eighth
`embodiment, but reflected light extraction unit 102 operates differently in
`the third and fifth embodiments. Prelim. Resp. 12–13 (citing Ex. 1004,
`29:5–18, 39:26–31, 39:50–60, Figs. 23, 46, 48). According to Patent
`Owner, “the Petition requires that reflected light extraction unit 102 be
`
`
`5 Although referring to “one or more electro-optical sensors,” it appears that
`Patent Owner intended to argue that Numazaki does not disclose
`determining that a gesture has been performed based on the output of one
`sensor. One or more sensors would include the two sensors that Patent
`Owner argues Numazaki requires.
`
`17
`
`

`

`Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 19 of 29 PageID #: 6297
`IPR2021-00921
`Patent 8,878,949 B2
`modified to generate both a ‘reflection matrix’ and a ‘distance matrix,’” but
`“there is no motivation for doing so” because “Numazaki’s third and fifth
`embodiments are disclosed as disparate embodiments.” Id. at 13.
`This argument is not persuasive because it mischaracterizes
`Petitioner’s position. We do not read the Petition as proposing to modify
`Numazaki’s reflected light extraction unit 102 so as to generate both a
`reflection matrix in accordance with the fifth embodiment and a distance
`matrix in accordance with the third embodiment. Rather, Petitioner relies on
`the fifth embodiment as disclosing videoconference functionality (Pet. 26–
`29) and the third embodiment as disclosing gesture recognition (id. at 29–
`30). As for the reflected light extraction unit, Petitioner relies on reflected
`light extraction unit 102 of the fifth embodiment, which Petitioner contends
`is the same two-camera reflected light extraction unit 102 used in the first
`embodiment. Id. at 26 & n.2.
`c) Limitation [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”
`Patent Owner argues that, although the Petition combines Numazaki’s
`third, fifth, and eighth embodiments to meet limitation [1(c)], there is no
`motivation to do so for several reasons. Prelim. Resp. 14. First, Patent
`Owner argues that “Numazaki explicitly delineates multiple embodiments”
`and teaches away from combining the third and fifth embodiments because
`these “embodiments effectively disclose competing implementations for the
`[feature data generation unit].” Id. at 14–15 (citing Ex. 1004, 10:21–27,
`29:1, 29:4–8, 39:3, 39:17–20, 39:50–60, Figs. 1, 23, 46, 48).
`
`18
`
`

`

`Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 20 of 29 PageID #: 6298
`IPR2021-00921
`Patent 8,878,949 B2
`We disagree that the implementations of the feature data generation
`unit for the third and fifth embodiments are “competing” to the degree that
`they are incompatible or teach away from combining aspects of the
`embodiments. Numazaki discloses that both the third and fifth embodiments
`are directed to other exemplary cases of the feature data generation unit of
`the first embodiment (Ex. 1004, 29:4–8, 39:17–20), thereby suggesting that
`the alternative implementations of the feature data generation unit can be
`used in place of the feature data generation unit of the first embodiment. In
`other words, Numazaki suggests that the various implementations are
`interchangeable. The mere fact that Numazaki’s third and fifth
`embodiments disclose different feature data generation units would not have
`discouraged one of ordinary skill in the art from considering and combining
`various aspects of the embodiments. For these reasons, we disagree with
`Patent Owner’s arguments at this stage of the proceeding.
`Second, Patent Owner challenges Petitioner’s argument that one of
`ordinary skill in the art would have combined Numazaki’s embodiments in
`the manner proposed to achieve a higher degree of freedom, good
`portability, and cost benefits as taught by Nonaka. Prelim. Resp. 15.
`Specifically, Patent Owner argues that “Nonaka teaches that ‘a higher degree
`of freedom, good portability, and cost benefits’ result from not making a
`camera operable via a remote-control unit,” but “Numazaki is completely
`silent regarding the existence of remote-control units and the use of remote-
`control units to operate a camera.” Id. (citing Ex. 1005, 2). Thus, in Patent
`Owner’s view, Petitioner’s reason for combining Numazaki’s embodiments
`is based on solving a problem that Numazaki never had. Id.
`We agree that Nonaka discloses that its gesture-based image capture
`functionality provides a higher degree of freedom, good portability, and cost
`
`19
`
`

`

`Case 2:21-cv-00040-JRG Document 157-5 Filed 12/16/21 Page 21 of 29 PageID #: 6299
`IPR2021-00