Case 2:21-cv-00040-JRG Document 55-1 Filed 07/16/21 Page 1 of 23 PageID #: 899
`
`P.R. 4-3 – Joint Claim Construction and Prehearing Statement
`Appendix 1 – Parties’ Proposed Constructions for Disputed Claim Terms
`
`
`I. U.S. Patent No. 7,933,431
`
`No.
`
`Claim Term
`
`Plaintiff’s Construction and Evidence
`
`Defendants’ Construction and Evidence
`
`1
`
`“means for
`controlling a
`function of said
`apparatus using
`said information”
`
`
`
`(Claim 7)
`
`This term is governed by 35 U.S.C. § 112 ¶
`6
`
`Structure: a control system associated with
`a camera1
`
`Function: “controlling a function of said
`apparatus using said information”
`
`Intrinsic Evidence:
`Abstract; 2:7-13; 2:20-23; 3:15-33; 4:56-62;
`5:50-60; 6:-19; 6:27-32; 7: 22-29; 7:55-76;
`12:42-64; 13:8-15; 14:45-51; 16:-7; 17:34-
`50; 19:16-34; 23:66-24:7; 24:35-50
`
`Extrinsic Evidence:
`See Expert Declaration of Benedict
`Occhiogrosso in Support of Plaintiff’s
`
`Means-plus-function
`
`Function: “controlling a function of said [handheld computer]
`apparatus using said information [concerning a position or
`movement of said object positioned by a user operating said
`object]”
`
`The dependent claims currently asserted by Plaintiff further add to
`the function, including:
`(1) wherein said object is a finger (Claim 8)
`
`Structure: Indefinite
`
`Intrinsic Evidence
`’431 Patent, FIG. 8; 11:53-13:44; Claims 7-8
`
`Extrinsic Evidence
`Expert testimony of Dr. Robert Louis Stevenson regarding what a
`person of ordinary skill in the art would understand the claim term
`
`
`1 Defendants object to the untimely change in GTP’s proposed structure for the “means for controlling” term, on the day of the P.R. 4-3 deadline and three weeks
`after the P.R. 4-2 deadline. GTP previously proposed that the structure for the “means for controlling” term was “a computer with at least one microprocessor
`specially programmed for controlling said apparatus using said information.” GTP did not raise the issue previously in any manner, and notably said nothing
`about it in the parties’ meet and confer the day before the P.R. 4.3 deadline. Defendants reserve the right to amend their construction and supporting evidence,
`including expert testimony, accordingly.
`
`Plaintiff’s Response: Plaintiff modified their proposed constructions to better reflect the intrinsic record after further review of that record. Claim construction is
`an iterative process that is designed to arrive at the proper construction for a term and is designed for the parties to refine the constructions after fair consideration
`of the intrinsic record, appropriate extrinsic evidence and the opposing parties positions. Plaintiff has done just that.
`
`
`
`
`1
`
`

`

`Case 2:21-cv-00040-JRG Document 55-1 Filed 07/16/21 Page 2 of 23 PageID #: 900
`
`Opening Claim Construction Brief served
`on July 16, 20212
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`
`
`to mean (which may include determining its recited function(s)
`and corresponding structure), based on the knowledge, experience,
`and understanding of a person of ordinary skill in the art, and upon
`reviewing the claims of the ’431 Patent, in view of the claim
`language, the drawings, the written description, the specification
`of the ’431 Patent as a whole, the file history of the ’431 Patent,
`and the extrinsic evidence, and to respond to Plaintiff’s claim
`construction positions and any testimony of Plaintiff’s expert
`witnesses.
`
`
`2
`
`Means-plus-function
`
`Function: “analyzing said image to determine information
`concerning a position or movement of said object [positioned by a
`user operating said object]”
`
`
`No construction necessary. Not governed
`“computer means
`by 35 U.S.C. § 112 ¶ 6.
`within said housing
`
`for analyzing said
`Alternatively, if the Court finds this term is
`image to determine
`subject to 35 U.S.C. § 112 ¶ 6:
`information
`
`concerning a
`
`2 Defendants object to GTP’s untimely identification of expert testimony across all claim terms. GTP failed to identify any expert or expert testimony—or any
`extrinsic evidence for that matter—for any claim term in its P.R. 4-2 disclosures as required by P.R. 4-2(b). GTP is identifying its expert, Benedict
`Occhiogrosso, for the first time on the day of the P.R. 4-3 deadline.
`
`Plaintiff’s Response: Defendants’ complaint about Plaintiff’s failure to comply with the Local Rules is equally applicable to Defendants. While Defendants
`identified an expert, Defendants did not identify or give a brief description of the Defendants’ Experts testimony for each claim limitation. Instead, Defendants’
`recited the identical paragraph for each claim limitation reciting only that the expert will rely upon non-specific citations to the intrinsic record, their expertise,
`and the prosecution history. Plaintiff reproduces the excerpt in its entirety below. Given Defendants’ generic, non-specific recitation of their expert’s purported
`testimony, relying on the universe of generic evidence that the expert may rely on, Defendants were equally non-compliant especially given their numerous
`indefiniteness challenges. For many of the claim terms, Plaintiff had no forewarning that Defendants would assert that the terms were controlled by 112 para 6,
`were indefinite for undisclosed grounds, or otherwise would be challenged as not disclosing definite structure. It was only after the 4.2 disclosures that Plaintiff
`became fully aware of Defendants tactics. Plaintiff has now identified an expert that has provided rebuttal testimony from which Defendants may conduct
`appropriate claim construction discovery if they choose. Defendants have suffered no prejudice that is not of their own making.
`
`“Expert testimony of Dr. Robert Louis Stevenson regarding what a person of ordinary skill in the art would understand the claim term to mean (which may
`include determining its recited function(s) and corresponding structure), based on the knowledge, experience, and understanding of a person of ordinary skill in
`the art, and upon reviewing the claims of the ’431 Patent, in view of the claim language, the drawings, the written description, the specification of the ’431 Patent
`as a whole, the file history of the ’431 Patent, and the extrinsic evidence, and to respond to Plaintiff’s claim construction positions and any testimony of
`Plaintiff’s expert witnesses.”
`
`
`
`
`2
`
`

`

`Case 2:21-cv-00040-JRG Document 55-1 Filed 07/16/21 Page 3 of 23 PageID #: 901
`
`position or
`movement of said
`object”
`
`(Claim 7)
`
`Structure: A computer with at least one
`microprocessor specially programmed
`programed to determine information
`concerning a position or movement of said
`object.
`
`Function: “analyzing said image to
`determine information concerning a
`position or movement of an object”
`
`Intrinsic Evidence:
`Abstract; 2:7-13; 2:20-23; 3:15-33; 4:48-62;
`6:2-19; 6:27-32; 6:64-7:14; 7:22-29; 7:55-
`76; 8:25-38; 8:60-9:14; 11:55-58; 12:42-64;
`13:8-15; 14:45-51; 16:1-7; 17:34-50; 19:16-
`34; 23:66-24:7; 24:35-50
`
`FIGS. 1A
`
`Extrinsic Evidence:
`See Expert Declaration of Benedict
`Occhiogrosso in Support of Plaintiff’s
`Opening Claim Construction Brief served
`on July 16, 2021
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`
`The dependent claims currently asserted by Plaintiff further add to
`the function, including:
`(1) wherein said object is a finger (Claim 8)
`
`Structure: “A computer programmed to (1) scan the pixel
`elements in a matrix array on which said image is formed, and
`then calculate the centroid location “x,y” of a target on the object
`using the moment method disclosed in U.S. Patent No. 4,219,847
`to Pinkney, as disclosed at 4:48-62; (2) add or subtract said image
`from prior images and identify movement blur, as disclosed at
`6:64-7:14, 7:22-29; (3) obtain a time variant intensity change in
`said image from the detected output voltage from the signal
`conditioning of the camera means or by subtracting images and
`observing the difference due to such variation, as disclosed at
`8:25-38; or (4) detect a change in color reflected from a
`diffractive, refractive, or interference based element on said object
`that reflects different colors during movement, as disclosed at
`8:60-9:14.”
`
`Intrinsic Evidence
`’431 Patent, FIG. 8; 3:63-4:4, 4:9-28, 6:64-7:29, 8:4-38, 8:60-
`9:14; Claims 7-8
`
`U.S. Patent App. No. 10/893,534 Prosecution History, including
`Jan. 24, 2008 Final Rejection at 2 and Apr. 24, 2008 Notice of
`Appeal at 2
`
`Extrinsic Evidence
`Expert testimony of Dr. Robert Louis Stevenson regarding what a
`person of ordinary skill in the art would understand the claim term
`to mean (which may include determining its recited function(s)
`and corresponding structure), based on the knowledge, experience,
`and understanding of a person of ordinary skill in the art, and upon
`reviewing the claims of the ’431 Patent, in view of the claim
`language, the drawings, the written description, the specification
`of the ’431 Patent as a whole, the file history of the ’431 Patent,
`
`
`
`3
`
`

`

`Case 2:21-cv-00040-JRG Document 55-1 Filed 07/16/21 Page 4 of 23 PageID #: 902
`
`3
`
`“display function
`which is
`controlled”
`
`(Claim 9)
`
`No construction necessary. Not governed
`by 35 U.S.C. § 112 ¶ 6.
`
`Intrinsic Evidence:
`5:50-60; 13:46-14:14;
`
`FIGS. 9, 10A, 10B
`
`Extrinsic Evidence:
`See Expert Declaration of Benedict
`Occhiogrosso in Support of Plaintiff’s
`Opening Claim Construction Brief served
`on July 16, 2021
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`
`4
`
`
`
`“sensing means
`associated with
`said device”
`
`(Claim 1)
`
`No construction necessary. Not governed
`by 35 U.S.C. § 112 ¶ 6.
`
`Alternatively, if the Court finds this term is
`subject to 35 U.S.C. § 112 ¶ 6:
`
`Structure: Electro-optical sensor.
`
`4
`
`and the extrinsic evidence, and to respond to Plaintiff’s claim
`construction positions and any testimony of Plaintiff’s expert
`witnesses.
`
`Means-plus-function
`
`Function: “controlling a display function”
`
`Structure: “a computer programmed to (1) move a slider on the
`display as disclosed at 13:54-67, (2) turn a knob on the display as
`disclosed at 13:63-14:9, or (3) throw a switch on the display as
`disclosed at 13:63-13:67”
`
`Intrinsic Evidence
`’431 Patent at FIG. 9, 13:54-67; Claim 9
`
`Extrinsic Evidence
`Expert testimony of Dr. Robert Louis Stevenson regarding what a
`person of ordinary skill in the art would understand the claim term
`to mean (which may include determining its recited function(s)
`and corresponding structure), based on the knowledge, experience,
`and understanding of a person of ordinary skill in the art, and upon
`reviewing the claims of the ’431 Patent, in view of the claim
`language, the drawings, the written description, the specification
`of the ’431 Patent as a whole, the file history of the ’431 Patent,
`and the extrinsic evidence, and to respond to Plaintiff’s claim
`construction positions and any testimony of Plaintiff’s expert
`witnesses.
`
`Means-plus-function
`
`Function: “electro-optically sensing light reflected from said at
`least one finger”
`
`Structure: “a camera”
`
`
`

`

`Case 2:21-cv-00040-JRG Document 55-1 Filed 07/16/21 Page 5 of 23 PageID #: 903
`
`
`Function: “electro-optically sensing light
`reflected from at least one finger”
`
`Intrinsic Evidence:
`Abstract, 3:15-22; 3:44-52; 4:42-47; 8:14-
`24; 9:16-28; 10:64-11:6; 11:54-58; 14:30-
`32; 14:52-59; 15:3-17; 17:4-16; 17:34-43;
`18:6-8; 18:20-24; 19:3-8; 20:23-25; 20:45-
`49; 21:21-26; 22:9-12; 23:58-65; 25:22-35
`
`FIGS. 1A, 1B, 1C, 2A, 5, 10, 11A, 11B, 13,
`17A, 17B
`
`Extrinsic Evidence:
`See Expert Declaration of Benedict
`Occhiogrosso in Support of Plaintiff’s
`Opening Claim Construction Brief served
`on July 16, 2021
`
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`This term is governed by 35 U.S.C. § 112 ¶
`6.
`
`Structure: A transmitter.
`
`Function: “transmitting information”
`
`Intrinsic Evidence:
`3:15-22; 11:62-64; 12:65-13:7
`
`FIG. 8A
`
`
`5
`
`Intrinsic Evidence
`’431 Patent at FIGS. 1A, 3A, 3C, 10A; 3:44-52, 7:22-25, 8:4-8,
`16:10-15; Claim 1
`
`Extrinsic Evidence
`Expert testimony of Dr. Robert Louis Stevenson regarding what a
`person of ordinary skill in the art would understand the claim term
`to mean (which may include determining its recited function(s)
`and corresponding structure), based on the knowledge, experience,
`and understanding of a person of ordinary skill in the art, and upon
`reviewing the claims of the ’431 Patent, in view of the claim
`language, the drawings, the written description, the specification
`of the ’431 Patent as a whole, the file history of the ’431 Patent,
`and the extrinsic evidence, and to respond to Plaintiff’s claim
`construction positions and any testimony of Plaintiff’s expert
`witnesses.
`
`
`Means-plus-function
`
`Function: “transmitting information”
`
`Structure: “cellular transceiver”
`
`Intrinsic Evidence
`’431 Patent at 12:65-13:3; Claim 11
`
`Extrinsic Evidence
`Expert testimony of Dr. Robert Louis Stevenson regarding what a
`person of ordinary skill in the art would understand the claim term
`
`5
`
`“means for
`transmitting
`information”
`
`(Claim 11)
`
`
`
`

`

`Case 2:21-cv-00040-JRG Document 55-1 Filed 07/16/21 Page 6 of 23 PageID #: 904
`
`Extrinsic Evidence:
`See Expert Declaration of Benedict
`Occhiogrosso in Support of Plaintiff’s
`Opening Claim Construction Brief served
`on July 16, 2021
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`
`No construction necessary.
`
`Intrinsic Evidence:
`3:30-37; 7:1-4; 7:66-8:3; 8:47-54; 9:1-6;
`10-19-22
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`
`“a light source for
`illuminating said
`object”
`
`(Claim 12)
`
`“wherein said
`movement is
`sensed in 3
`dimensions”
`
`(Claim 4)
`
`No construction necessary.
`
`Intrinsic Evidence:
`3:15-19; 3:53-60; 4:29-32; 7:22-29; 19:16-
`43; 23:58-65; 24:44-50
`
`FIG. 12
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`
`6
`
`to mean (which may include determining its recited function(s)
`and corresponding structure), based on the knowledge, experience,
`and understanding of a person of ordinary skill in the art, and upon
`reviewing the claims of the ’431 Patent, in view of the claim
`language, the drawings, the written description, the specification
`of the ’431 Patent as a whole, the file history of the ’431 Patent,
`and the extrinsic evidence, and to respond to Plaintiff’s claim
`construction positions and any testimony of Plaintiff’s expert
`witnesses.
`
`“a light source designed to transmit light directly onto said object”
`
`Intrinsic Evidence
`’431 Patent at FIG. 1A, 3C, 4B; 3:23-43, 8:4-14, 9:1-8; Claim 12
`
`Extrinsic Evidence
`U.S. Patent No. 8,405,604, including 53:47-54
`
`U.S. Patent App. No. 11/349,350 Prosecution History, including
`May 12, 2010 Pre-Appeal Brief Request for Review at 1-2
`
`’079 Patent and its file history
`
`“wherein said movement is determined with respect to three
`perpendicular axes”
`
`Intrinsic Evidence
`’431 Patent at FIG. 1B, 3:53-60; Claim 4
`
`Extrinsic Evidence
`The IEEE Standard Dictionary of Electrical and Electronics Terms
`(Sixth Edition, 1997), including at 1108
`
`McGraw-Hill Dictionary of Scientific and Technical Terms (Fifth
`Edition, 1994), including at 2025
`
`
`6
`
`7
`
`
`
`

`

`Case 2:21-cv-00040-JRG Document 55-1 Filed 07/16/21 Page 7 of 23 PageID #: 905
`
`8
`
`9
`
`10
`
`
`
`“wherein said
`information is
`obtained in 3
`dimensions”
`
`(Claim 19)
`
`No construction necessary.
`
`Intrinsic Evidence:
`3:53-60; 4:29-33; 22:25-30; 23:53-57;
`24:44-58; 25:32-35
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`
`“electro-optically
`sensing”
`
`(Claim 1)
`
`“electro-optical
`sensing”
`
`(Claim 2)
`
`No construction necessary.
`
`Intrinsic Evidence:
`Abstract, 3:15-19; 3:44-52; 4:42-47; 9:16-
`28; 11:54-58; 14:30-32; 14:52-59; 15:3-17;
`17:4-16; 17:34-43; 18:6-8; 18:20-24; 19:3-
`8; 20:23-25; 20:45-49; 21:21-26; 22:9-12;
`23-58-65; 25:22-35
`
`FIGS. 1A, 1B, 1C, 2A, 5, 10, 11A, 11B, 13,
`17A, 17B
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`No construction necessary.
`
`Intrinsic Evidence:
`
`7
`
`’079 Patent and its file history
`
`’949 Patent and its file history
`
`“wherein said information is obtained with respect to three
`perpendicular axes”
`
`Intrinsic Evidence
`’431 Patent at FIG. 1B, 3:53-60; Claim 19
`
`Extrinsic Evidence
`The IEEE Standard Dictionary of Electrical and Electronics Terms
`(Sixth Edition, 1997), including at 1108
`
`McGraw-Hill Dictionary of Scientific and Technical Terms (Fifth
`Edition, 1994), including at 2025
`
`“sensing [light reflected from said at least one finger] by
`measuring changes to an electric field”
`
`Intrinsic Evidence
`’431 Patent at FIG. 17A; 3:15-22, 11:54-58, 17:4-14, 23:58-65;
`Claim 1
`
`Extrinsic Evidence
`The IEEE Standard Dictionary of Electrical and Electronics Terms
`(Sixth Edition, 1997), including at 349
`
`McGraw-Hill Dictionary of Scientific and Technical Terms (Fifth
`Edition, 1994) , including at 665-66
`
`
`“sensing light reflected from said at least one finger by measuring
`changes to an electric field”
`
`Intrinsic Evidence
`
`

`

`Case 2:21-cv-00040-JRG Document 55-1 Filed 07/16/21 Page 8 of 23 PageID #: 906
`
`’431 Patent at FIG. 17A; 3:15-22, 11:54-58, 17:4-14, 23:58-65;
`Claim 2
`
`Extrinsic Evidence
`The IEEE Standard Dictionary of Electrical and Electronics Terms
`(Sixth Edition, 1997), including at 349
`
`McGraw-Hill Dictionary of Scientific and Technical Terms (Fifth
`Edition, 1994) , including at 665-66
`
`
`Abstract, 3:15-19; 3:44-52; 4:42-47; 9:16-
`28; 11:54-58; 14:30-32; 14:52-59; 15:3-17;
`17:4-16; 17:34-43; 18:6-8; 18:20-24; 19:3-
`8; 20:23-25; 20:45-49; 21:21-26; 22:9-12;
`23-58-65; 25:22-35
`
`FIGS. 1A, 1B, 1C, 2A, 5, 10, 11A, 11B, 13,
`17A, 17B
`
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`
`
`
`8
`
`
`
`
`
`
`
`

`

`Case 2:21-cv-00040-JRG Document 55-1 Filed 07/16/21 Page 9 of 23 PageID #: 907
`
`II. U.S. Patent No. 8,194,924
`
`No. Claim Term
`
`Plaintiff’s Construction and Evidence Defendants’ Construction and Evidence
`
`1
`
`“oriented to view”
`
`No construction necessary.
`
`Intrinsic Evidence:
`3:53-60; 9:26-30; 15:6-19; 10:38-62;
`25:40-63
`
`FIGS. 1A, 1B, 18
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`
`No construction necessary.
`
`Intrinsic Evidence:
`3:53-60; 9:26-30; 15:6-19; 10:38-62;
`25:40-63
`
`FIGS. 1A, 1B, 18
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`
`No construction necessary.
`
`Intrinsic Evidence:
`3:53-60; 9:26-30; 15:6-19; 10:38-62;
`25:40-63
`
`
`(Claim 1)
`
`“oriented to view a
`user”
`
`(Claim 1)
`
`“oriented to view an
`object other than the
`user”
`
`(Claim 1)
`
`2
`
`3
`
`
`
`“having a field of view encompassing”
`
`Intrinsic Evidence
`’924 Patent at FIG. 18; 25:40-26:40; Claim 1
`
`U.S. Patent App. No. 13/714,755, including Claims 1, 7, 14
`
`Extrinsic Evidence
`Merriam-Webster’s Collegiate Dictionary (Tenth Edition, 1995),
`including at 820
`
`The Concise Oxford Dictionary of Current English (Ninth Edition,
`1995), including at 961-62
`
`Indefinite under IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d
`1377 (Fed. Cir. 2005).
`
`Intrinsic Evidence
`’924 Patent at FIG. 18; 25:40-26:40; Claim 1
`
`U.S. Patent App. No. 13/714,755, including Claims 1, 7, 14
`
`
`Indefinite under IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d
`1377 (Fed. Cir. 2005).
`
`Intrinsic Evidence
`’924 Patent at FIG. 18; 25:40-26:40; Claim 1
`
`
`9
`
`

`

`Case 2:21-cv-00040-JRG Document 55-1 Filed 07/16/21 Page 10 of 23 PageID #: 908
`
`FIGS. 1A, 1B, 18
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`
`No construction necessary.
`
`Intrinsic Evidence:
`4:33-40; 6:58-7:29; 20:5-16; 22:9-12;
`19:41-63; 20:5-32
`
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`
`No construction necessary. Not
`governed by 35 U.S.C. § 112 ¶ 6.
`
`Intrinsic Evidence:
`Abstract; 2:7-13; 2:20-23; 3:19-36;
`11:65-12:11; 13:57-17; 14:33-62; 15:6-
`17:22; Claim 1.
`
`FIGS. 18
`
`Extrinsic Evidence:
`See Expert Declaration of Benedict
`Occhiogrosso in Support of Plaintiff’s
`Opening Claim Construction Brief
`served on July 16, 2021
`
`
`
`“wherein the gesture
`is performed by a
`person other than
`the user of the
`handheld device”
`
`(Claim 9)
`
`“a computer within
`the housing . . .
`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”
`
`(Claims 1, 6-8, 10,
`12, 14)
`
`U.S. Patent App. No. 13/714,755, including Claims 1, 7, 14
`
`
`Indefinite under IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d
`1377 (Fed. Cir. 2005).
`
`Intrinsic Evidence
`’924 Patent at 20:5-10, 22:9-12, 22:39-60, 25:40-63, 26:25-27; Claims
`6, 9
`
`
`Means-plus-function
`
`Function: “perform a control function of the handheld device based
`on at least one of the first camera output and the second camera
`output”
`
`The dependent claims currently asserted by Plaintiff add additional
`functions, including:
`(1) “determine a gesture based on at least one of the first camera
`output and the second camera output” (Claim 6);
`(2) “determine a facial expression based on at least one of the first
`camera output and the second camera output” (Claim 7);
`(3) “determine at least one of the position and the orientation of the
`object based on the second camera output” (Claim 8);
`(4) “recognize the object based on the second camera output” (Claim
`10);
`(5) “determine a reference frame of the object” (Claim 12)
`(6) “transmit information over an internet connection” (Claim 14)
`
`
`10
`
`4
`
`5
`
`
`
`

`

`Case 2:21-cv-00040-JRG Document 55-1 Filed 07/16/21 Page 11 of 23 PageID #: 909
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`
`6
`
`“gesture”
`
`(Claims 6, 9)
`
`No construction necessary.
`
`Intrinsic Evidence:
`4:33-40; 6:58-7:29; 20:5-16; 22:9-12;
`19:41-63
`
`FIGS. 3A, 12
`
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`
`Structure: Indefinite
`
`Intrinsic Evidence
`’924 Patent at FIG. 18; 25:16-24, 25:40-49, 25:64-26:5, 26:32-43;
`Claims 1, 6-8, 10-14
`
`’924 Patent Prosecution History, including Dec. 14, 2011 Applicant
`Arguments/Remarks Made in Amendment at 7
`
`U.S. Patent App. No. 10/893,534, including Jan. 24, 2008 Final
`Rejection at 2 and Apr. 24, 2008, Notice of Appeal at 2
`
`Extrinsic Evidence
`Expert testimony of Dr. Robert Louis Stevenson regarding what a
`person of ordinary skill in the art would understand the claim term to
`mean (which may include determining its recited function(s) and
`corresponding structure), based on the knowledge, experience, and
`understanding of a person of ordinary skill in the art, and upon
`reviewing the claims of the ’924 Patent, in view of the claim language,
`the drawings, the written description, the specification of the ’924
`Patent as a whole, the file history of the ’924 Patent, and the extrinsic
`evidence, and to respond to Plaintiff’s claim construction positions and
`any testimony of Plaintiff’s expert witnesses.
`
`“a sequence of positions that conveys a meaning”
`
`Intrinsic Evidence
`’924 Patent at 20:5-10, 22:9-12, 22:39-60, 25:40-63, 26:25-27; Claims
`6-7, 9
`
`Extrinsic Evidence
`The Concise Oxford Dictionary of Current English (Ninth Edition,
`1995), including at 568
`
`Merriam-Webster’s Collegiate Dictionary (Tenth Edition, 1995),
`including at 489
`
`
`
`11
`
`

`

`Case 2:21-cv-00040-JRG Document 55-1 Filed 07/16/21 Page 12 of 23 PageID #: 910
`
`7
`
`“adapted to”
`
`(Claims 1, 3-5, 8,
`10, 12, 14)
`
`
`’079 Patent and its file history
`
`’949 Patent and its file history
`
`computer: “programmed to”
`
`first and second cameras: “designed to”
`
`Intrinsic Evidence
`’924 Patent at FIG. 18; 25:16-24, 25:40-49, 25:64-26:5, 26:32-43;
`Claims 1, 3-8, 10-14
`
`’924 Patent Prosecution History, including Dec. 14, 2011 Applicant
`Arguments/Remarks Made in Amendment at 7
`
`U.S. Patent App. No. 10/893,534, including Jan. 24, 2008 Final
`Rejection at 2 and Apr. 24, 2008, Notice of Appeal at 2
`
`
`
`No construction necessary.
`
`Intrinsic Evidence:
`Abstract; 2:7-13; 2:20-23; 3:19-57; 4:33-
`53; 11:57-12:11; 12:62-13:28; 13:57-17;
`14:33-62; 15:6-17:22; 26-25-27
`
`FIGS. 8A, 8B, 18
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`
`
`
`12
`
`
`
`
`
`

`

`Case 2:21-cv-00040-JRG Document 55-1 Filed 07/16/21 Page 13 of 23 PageID #: 911
`
`
`
`III. U.S. Patent No. 8,553,079
`
`No. Claim Term
`
`Plaintiff’s Construction and Evidence Defendants’ Construction and Evidence
`
`1
`
`“gesture”
`
`(Claims 1, 4-5, 11,
`18-21, 24-25)
`
`No construction necessary.
`
`Intrinsic Evidence:
`Abstract; 2:54-64; 3:48-55; 5:23-28;
`5:63-65; 9:63-10:49; 11:49-58
`
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`
`“light source
`adapted to direct
`illumination through
`a work volume
`above the light
`source”
`
`“light source
`adapted to
`illuminate a human
`body part within a
`work volume
`
`No construction necessary.
`
`Intrinsic Evidence:
`Abstract; 1:54-2:6; 2:39-48; 2:65-3:8;
`4:4-28; 4:41-50; 9:25-48; 10-30-40;
`
`FIGS. 1, 2, 6
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`
`2
`
`
`
`“a sequence of positions that conveys a meaning”
`
`Intrinsic Evidence
`’079 Patent at 2:54-64, 3:48-51, 5:23-39, 5:63-65, 9:49-62; Claims 5,
`18-20, 25
`
`Extrinsic Evidence
`The Concise Oxford Dictionary of Current English (Ninth Edition,
`1995), including at 568
`
`Merriam-Webster’s Collegiate Dictionary (Tenth Edition, 1995),
`including at 489
`
`’924 Patent and its file history
`
`’949 Patent and its file history
`
`“a light source designed to transmit light directly through a work
`volume above the component”
`
`“a light source designed to transmit light directly onto a human body
`part within a work volume generally above the component”
`
`“a light source in fixed relation relative to the camera and designed to
`transmit light directly through the work volume”
`
`Intrinsic Evidence
`’079 patent at FIGS. 1-3; 2:49-58, 3:1-3, 4:4-24, 4:61-64; Claims 1-3,
`9-12, 14-15, 21-23, 30
`
`
`13
`
`

`

`Case 2:21-cv-00040-JRG Document 55-1 Filed 07/16/21 Page 14 of 23 PageID #: 912
`
`generally above the
`light source”
`
`“light source in
`fixed relation
`relative to the
`camera and adapted
`to direct
`illumination through
`the work volume”
`
`(Claims 1-3, 9-11,
`14-15, 21-23, 30)
`
`“a processor adapted
`to determine the
`gesture performed in
`the work volume
`and illuminated by
`the light source
`based on the camera
`output”
`
`(Claim 11)
`
`3
`
`
`
`Extrinsic Evidence
`U.S. Patent No. 8,405,604, including 53:47-54
`
`U.S. Patent App. No. 11/349,350 Prosecution History, including May
`12, 2010 Pre-Appeal Brief Request for Review at 1-2
`
`’431 Patent and its file history
`
`No construction necessary. Not
`governed by 35 U.S.C. § 112 ¶ 6.
`
`Intrinsic Evidence:
`1:54-2:3; 2:39-48; 4:4-14; 8:9-21; 9:26-
`56; Claim 11
`
`FIGS. 2, 6,
`
`Extrinsic Evidence:
`See Expert Declaration of Benedict
`Occhiogrosso in Support of Plaintiff’s
`Opening Claim Construction Brief
`served on July 16, 2021
`
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`
`Means-plus-function
`
`Function: “determine the gesture performed in the work volume and
`illuminated by the light source based on the camera output”
`
`The dependent claims currently asserted by Plaintiff further add to the
`function, including:
`(1) determining a pointing gesture (Claim 19)
`
`Structure: Indefinite
`
`Intrinsic Evidence
`’079 Patent at 2:58-61; 3:48-51, Claims 11, 18-20
`
`Extrinsic Evidence
`Expert testimony of Dr. Robert Louis Stevenson regarding what a
`person of ordinary skill in the art would understand the claim term to
`mean (which may include determining its recited function(s) and
`corresponding structure), based on the knowledge, experience, and
`understanding of a person of ordinary skill in the art, and upon
`reviewing the claims of the ’079 Patent, in view of the claim language,
`the drawings, the written description, the specification of the ’079
`Patent as a whole, the file history of the ’079 Patent, and the extrinsic
`14
`
`

`

`Case 2:21-cv-00040-JRG Document 55-1 Filed 07/16/21 Page 15 of 23 PageID #: 913
`
`4
`
`“the first and second
`cameras”
`
`(Claim 26)
`
`5
`
`“adapted to”
`
`(Claims 1, 11, 21)
`
`6
`
`“three-dimensional
`position”
`
`(Claims 8, 28)
`
`No construction necessary.
`
`Intrinsic Evidence:
`2:65-3:3; 3:48-61; 4:29-34; 4:39-54;
`4:65-5:13; 7:13-17; 9:63-65; 10:26-41
`
`FIGS. 2, 5, 6
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`
`No construction necessary.
`
`Intrinsic Evidence:
`Abstract; 1:54-2:6; 2:39-48; 2:65-3:8;
`4:4-28; 4:41-50; 8:9-21; 9:25-48; 10-30-
`40;
`
`FIGS. 1, 2, 6
`
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`
`No construction necessary.
`
`Intrinsic Evidence:
`1:54-62; 5:14-21; 7:19-27; 11:59-67;
`12:16-45;
`
`FIGS. 7A, 7B
`
`evidence, and to respond to Plaintiff’s claim construction positions and
`any testimony of Plaintiff’s expert witnesses.
`
`Indefinite for lack of antecedent basis
`
`Intrinsic Evidence
`’079 Patent at Claims 21, 26
`
`
`light source: “designed to”
`
`processor: “programmed to”
`
`Intrinsic Evidence
`’079 Patent at FIGS. 1-3; 2:49-61, 3:1-3, 3:48-51, 4:4-24, 4:61-64;
`Claims 1-3, 9-12, 14-15, 18-23, 30
`
`
`
`“a position defined with respect to three perpendicular axes (xyz)”
`
`Intrinsic Evidence
`’079 Patent at 8:63-67; Claims 8, 28
`
`Extrinsic Evidence
`
`
`
`15
`
`

`

`Case 2:21-cv-00040-JRG Document 55-1 Filed 07/16/21 Page 16 of 23 PageID #: 914
`
`
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`
`7
`
`“work volume above
`the light source”
`
`“work volume
`generally above the
`light source”
`
`“work volume above
`the camera”
`
`(Claims 1, 6-7, 11-
`12, 21)
`
`No construction necessary.
`
`Intrinsic Evidence:
`Abstract; 2:39-48; 3:4-8; 3:43-47
`
`FIGS. 1
`
`
`Plaintiff reserves the right to provide
`additional evidence to rebut evidence
`proffered by Defendants.
`
`
`
`
`
`
`
`The IEEE Standard Dictionary of Electrical and Electronics Terms
`(Sixth Edition, 1997), including at 1108
`
`McGraw-Hill Dictionary of Scientific and Technical Terms (Fifth
`Edition, 1994), including at 2025
`
`’949 Patent and its file history
`
`’431 Patent and its file history
`
`“volume of space above the light source visible to the camera within
`which gestures are performed”
`
`“volume of space generally above the light source visible to the
`camera within which gestures are performed”
`
`“volume of space above the camera visible to the camera within which
`gestures are performed”
`
`Intrinsic Evidence
`’079 Patent at FIGS. 1-2; 2:39-48; 3:4-20; 3:56-61; 4:29-40; 5:14-21
`
`U.S. Patent App. No. 09/433,297 Prosecution History, including Sept.
`9, 2002 Applicant Arguments/Remarks Made in Amendment at 2-3
`
`Extrinsic Evidence
`U.S. Patent No. 6,545,670, including FIG. 1, 3:46-51
`
`U.S. Patent No. 8,405,604, including FIG. 1c, 9:41-67, 10:43-45,
`57:64-67
`
`
`16
`
`

`

`Case 2:21-cv-00040-JRG Document 55-1 Filed 07/16/21 Page 17 of 23 PageID #: 915
`
`IV. U.S. Patent No. 8,878,949
`
`No. Claim Term
`
`Plaintiff’s Construction and Evidence Defendants’ Construction and Evidence
`
`1
`
`“gesture”
`
`No construction necessary.
`
`(Claims 1-3, 8-10,
`13-15)
`
`Intrinsic Evidence:
`5:30-49; 6:63-7:2; 8:6-9; 8:56-63; 11:17-
`24; 12-13:5; 13:65-14:5
`
`Plaintiff reserves the right to provide
`additional evide