Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 1 of 43 PageID #: 1529
`
`Exhibit T
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 2 of 43 PageID #: 1530
`IPR2021-00917
`Patent 7,933,431
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`UNIFIED PATENTS, LLC
`
`Petitioner,
`v.
`GESTURE TECHNOLOGY PARTNERS, LLC
`
`Patent Owner
`__________________
`Inter Partes Review No. IPR2021-00917
`Patent No. 7,933,431
`PATENT OWNER’S RESPONSE TO THE PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,933,431
`PURSUANT TO 37 C.F.R. § 42.120
`
`Filed on behalf of Patent Owner by:
`
`Todd E. Landis (Reg. No. 44,200)
`2633 McKinney Ave., Suite 130
`Dallas, TX 75204
`
`John Wittenzellner (Reg. No. 61,662)
`1735 Market Street, Suite A #453
`Philadelphia, PA 19103
`
`Adam B. Livingston (Reg. No. 79,173)
`327 Congress Avenue, Suite 490
`Austin, TX 78701
`WILLIAMS SIMONS & LANDIS PLLC
`
`
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 3 of 43 PageID #: 1531
`IPR2021-00917
`Patent 7,933,431
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 3
`
`I.
`
`II.
`
`III. THE PETITION SHOULD BE DENIED BECAUSE IT DOES NOT
`ESTABLISH A REASONABLE LIKELIHOOD OF SUCCESS ON
`ANY CHALLENEGED CLAIM .................................................................... 3
`A. The ’431 Patent ....................................................................................... 3
`B. Level of Ordinary Skill in the Art .......................................................... 5
`C. Claim Construction ................................................................................. 5
`D. Ground 1 – The Combination of Doi and Cousins Does Not Render
`Claims 7-12 Obvious .............................................................................. 7
`1.
`Independent Claim 7 ................................................................... 7
`i.
`[7.0] Handheld computer apparatus comprising: ................ 7
`
`ii.
`
`[7.2] 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 .................................................................................13
`
`iii.
`
`[7.3] computer means within said housing for
`analyzing said image to determine information
`concerning a position or movement of said object ...........15
`
`iv.
`
`[7.4] means for controlling a function of said
`apparatus using said information ......................................16
`
`2.
`3.
`4.
`5.
`
`Dependent Claim 8....................................................................17
`Dependent Claim 9....................................................................17
`Dependent Claim 10 .................................................................18
`Dependent Claim 11 .................................................................18
`
`-i-
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 4 of 43 PageID #: 1532
`IPR2021-00917
`Patent 7,933,431
`
`
`
`Dependent Claim 12 .................................................................19
`6.
`E. Ground 2 – The Combination of Doi, Cousins, and Parulski Does
`Not Render Claim 13 Obvious ............................................................. 19
`F. Ground 3 – Numazaki Does Not Anticipate Claims 7-9 and 11-12 .... 20
`1.
`Independent Claim 7 .................................................................20
`i.
`[7.2] 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 .................................................................................20
`
`ii.
`
`[7.3] computer means within said housing for
`analyzing said image to determine information
`concerning a position or movement of said object ...........21
`
`Dependent Claim 8....................................................................23
`2.
`Dependent Claim 9....................................................................23
`3.
`Dependent Claim 11 .................................................................24
`4.
`Dependent Claim 12 .................................................................25
`5.
`G. Ground 4 – Rhoads Does Not Render Claims 7, 9, and 11 Obvious ... 25
`1.
`Independent Claim 7 .................................................................25
`i.
`[7.0] Handheld computer apparatus comprising: ..............25
`
`ii.
`
`[7.3] computer means within said housing for
`analyzing said image to determine information
`concerning a position or movement of said object ...........27
`
`2.
`3.
`
`Dependent Claim 9....................................................................29
`Dependent Claim 11 .................................................................29
`
`
`
`
`
`-ii-
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 5 of 43 PageID #: 1533
`IPR2021-00917
`Patent 7,933,431
`
`
`IV. THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. § 314(a) .......30
`
`V.
`
`THE PETITION SHOULD BE DENIED BECAUSE THE BOARD
`DOES NOT HAVE JURISDICTION OVER EXPIRED PATENTS ...........34
`VI. CONCLUSION ..............................................................................................35
`
`
`
`
`
`
`
`-iii-
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 6 of 43 PageID #: 1534
`IPR2021-00917
`Patent 7,933,431
`
`
`
`EXHIBIT LIST
`
`Exhibit
`
`2001
`
`Description
`Dkt. 65, Second Amended Docket Control Order, Gesture
`
`Technology Partner, LLC v. Huawei Device Co., Ltd., No. 2:21-cv-
`
`00040-JRG (E.D. Tex. Aug. 17, 2021).
`
`-iv-
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 7 of 43 PageID #: 1535
`IPR2021-00917
`Patent 7,933,431
`
`I.
`
`INTRODUCTION
`
`Gesture Technology Partners, LLC (“GTP” or “Patent Owner”) respectfully
`
`submits this Preliminary Response (the “Response”) to Unified Patents, LLC’s
`
`(“Unified Patents” or “Petitioner”) Petition for Inter Partes Review (“IPR”) No.
`
`IPR2021-00917 (the “Petition” or “Pet.”) of U.S. Patent No. 7,933,431 (the “’431
`
`Patent”).
`
`Institution should be denied because the Petition fails to demonstrate a
`
`reasonable likelihood that any challenged claim of the ’431 Patent is unpatentable.
`
`As detailed herein, the references applied by the Petition have numerous glaring
`
`deficiencies, failing to disclose at least the following limitations that are recited in
`
`the sole independent claim at issue in the Petition:
`
` [7.0]1 Handheld computer apparatus comprising;
`
` [7.2] 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;
`
`
`1 For convenience of reference only, this Preliminary Response adopts the claim
`
`element numbering presented in the Petition.
`
`-1-
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 8 of 43 PageID #: 1536
`IPR2021-00917
`Patent 7,933,431
`
`
`
` [7.3] computer means within said housing for analyzing said image to
`
`determine information concerning a position or movement of said object;
`
`and
`
` [7.4] means for controlling a function of said apparatus using said
`
`information.
`
`Institution should also be denied because the Board should exercise its
`
`discretionary power to deny institution under 35 U.S.C. § 314(a). Petitioner, Unified
`
`Patents, receives subscription fees from its Members to, amongst other file petitions
`
`for inter partes review. But Petitioner has declined to identify whether any of the
`
`defendants in litigation involving the ’431 Patent are Unified Members, thereby
`
`denying the Board and Patent Owner a full and fair opportunity to address why the
`
`Board should deny institution under Apple Inc. v. Fintiv Inc. (“Fintiv”), IPR2020-
`
`00019, Paper 11 (PTAB May 13, 2020) (precedential) and General Plastic Industrial
`
`Co., Ltd. v. Canon Kabushiki Kaisha (“General Plastic”), IPR2016-01357, Paper 19
`
`at 15-19 (September 6, 2017) (precedential).
`
`Finally, the Petition should be denied because the Board does not have
`
`jurisdiction over expired patents.
`
`For these reasons, institution should be denied.
`
`-2-
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 9 of 43 PageID #: 1537
`IPR2021-00917
`Patent 7,933,431
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Patent Owner requests that the Board deny institution of the Petition with
`
`
`II.
`
`respect to all challenged claims and all asserted grounds. A full statement of the
`
`reasons for the relief requested is set forth in Sections III and IV of this Response.
`
`III.
`
`THE PETITION SHOULD BE DENIED BECAUSE IT DOES NOT
`ESTABLISH A REASONABLE LIKELIHOOD OF SUCCESS ON ANY
`CHALLENEGED CLAIM
`
`As shown below, the Petition fails to demonstrate a reasonable likelihood that
`
`Petitioner would prevail with respect to any claim of the ’431 Patent. The Petition
`
`challenges claims 7-13 of the ’431 Patent (the “Challenged Claims”). Pet. at 4. As
`
`detailed herein, each proposed Ground fails to disclose key limitations of each
`
`Challenged Claim. Trial should not be instituted.
`
`A. The ’431 Patent
`
`The ’431 Patent, which is entitled “Camera Based Sensing In Handheld,
`
`Mobile, Gaming, Or Other Devices,” claims priority to U.S. Provisional Application
`
`No. 60/142,777 filed on July 8, 1999. See Ex. 1001. The ’431 Patent is directed
`
`towards methods and apparatuses “to enable rapid TV camera and computer-based
`
`sensing in many practical applications, including, but not limited to, handheld
`
`devices, cars, and video games.” Id., Abstract. In some embodiments, the patent
`
`describes the use of computer devices and one or more cameras that “optically
`
`-3-
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 10 of 43 PageID #: 1538
`IPR2021-00917
`Patent 7,933,431
`
`
`sens[e] human input” with applications in a “variety of fields such as computing,
`
`gaming, medicine, and education.” Id., 2:7-17.
`
`In some embodiments, the ’431 Patent discloses a handheld device, such as a
`
`cell phone, that processes imaging from a person or object to control functions on
`
`the handheld device. Id., 11:62:-67. Figure 8A, which is reproduced below, depicts
`
`some embodiments in which a handheld device includes the functionality of the
`
`invention.
`
`Ex. 1001, Fig. 8A.
`
`-4-
`
`
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 11 of 43 PageID #: 1539
`IPR2021-00917
`Patent 7,933,431
`
`The ’431 Patent describes that the handheld device can “perform a control
`
`
`
`function by determining [] position, orientation, pointing direction or other variable
`
`with respect to one or more external objects, using an optical sensing apparatus . . .
`
`or with a camera located in the handheld device, to sense datums or other information
`
`external for example to the device.” Id., 12:1-9. The ’431 Patent describes that the
`
`device is able to “acquire features of an object and use it to determine something”
`
`such as object recognition. Ex. A. at 13:5-21. The ’431 Patent states that the purpose
`
`of some handheld embodiments is “to add functionality to the device, without
`
`complicating its base function, and/or alternatively [to] add a method to interact with
`
`the device to achieve other purposes.” Id. at 11:64-67.
`
`B.
`
`Level of Ordinary Skill in the Art
`
`For the purposes of this Response only, Patent Owner does not dispute the
`
`level of skill of a person of ordinary skill in the art (“POSITA”) identified in the
`
`Petition.
`
`C. Claim Construction
`
`Patent Owner does not contest the constructions proposed in the Petition
`
`because the Petition fails to demonstrate a reasonable likelihood that any challenged
`
`claim of the ’431 Patent is unpatentable under Petitioner’s proposed constructions.
`
`See Pet., pp. 13-17. Patent Owner reserves the right to address claim construction
`
`of any term in the Challenged Claims if the Board institutes inter partes proceedings.
`
`-5-
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 12 of 43 PageID #: 1540
`IPR2021-00917
`Patent 7,933,431
`
`The preamble of claim 7 should be construed as a limitation. “A preamble
`
`
`
`limits the invention if it recites essential structure or steps, or is ‘necessary to give
`
`life, meaning, and vitality’ to the claim.” Acceleration Bay, LLC v. Activision
`
`Blizzard, Inc., 908 F.3d 765, 770 (Fed. Cir. Nov. 6, 2018) (quoting Catalina Mktg.
`
`Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)). The
`
`preamble of claim 7 does both. Claim 7 is reproduced below.
`
`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;
`
`computer means within said housing for analyzing said image to determine
`
`information concerning a position or movement of said object; and
`
`means for controlling a function of said apparatus using said information.
`
`Ex. 1001, 25:61-26:5 (emphasis added). The preamble recites a “Handheld
`
`computer apparatus comprising.” The final limitation of claim 7 refers back to the
`
`same handheld computer apparatus for antecedent basis. So the preamble recites
`
`essential structure for claim 7.
`
`The preamble is also necessary to give life, meaning, and vitality to claim 7.
`
`The ’431 Patent discloses different embodiments of Dr. Pryor’s inventions. In some
`
`-6-
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 13 of 43 PageID #: 1541
`IPR2021-00917
`Patent 7,933,431
`
`
`embodiments, the invention is provided in the form of a computer. See, e.g., Ex.
`
`1001, Fig. 1A. In some other embodiments, the invention is provided in a handheld
`
`device, such as a cell phone. See id., 12:59-13:7. Claim 7 purposely recites a
`
`“handheld device” to claim the handheld-device embodiments disclosed in the
`
`specification. Thus, the preamble is necessary to give life, meaning, and vitality to
`
`claim 7, consistent with the embodiments that the inventor chose to claim.
`
`Accordingly, the preamble of claim 7 should be construed as a limitation.
`
`D. Ground 1 – The Combination of Doi and Cousins Does Not Render
`Claims 7-12 Obvious
`
`The combination of Doi and Cousins does not render claims 7-12 obvious.
`
`1.
`Independent Claim 7
`The combination of Doi and Cousins does not render independent claim 7
`
`obvious because they do not teach or suggest the following elements of independent
`
`claim 7.
`
`i.
`[7.0] Handheld computer apparatus comprising:
`Claim element [7.0] recites a “handheld computer apparatus comprising.”
`
`The Petition concedes that the Doi reference (Ex. 1005) does not disclose a handheld
`
`computer apparatus. Pet., p. 21 (“Doi teaches . . . a computer apparatus as
`
`recited. . . . Cousins supplements the teachings of Doi and discloses that such an
`
`apparatus may be handheld. . . .”). This is not surprising because Doi teaches a
`
`computer system that is not handheld. For example, Figure 3, which is reproduced
`
`-7-
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 14 of 43 PageID #: 1542
`IPR2021-00917
`Patent 7,933,431
`
`
`below, depicts a display device (20) and the housing (8) of the image input unit (1).
`
`Id., 7:63-64.
`
`
`
`Ex. 1005, Fig. 3. The housing for the image input unit is depicted as being physically
`
`separate from the display device. See id., Fig. 3. Doi discloses a generic “computer”
`
`that consists of many units (e.g., “image input unit,” “image storage unit,” “shape
`
`interpreting unit,” “interpretation rule storage unit,” “cursor switching unit,”
`
`“presenting unit”), none of which are described as being within the same housing,
`
`let alone being within the same handheld device. See, e.g., Ex. 1005, 7:13-40, Fig.
`
`1.
`
`The Petition attempts to address this shortcoming in Doi by combining it with
`
`the Cousins reference (Ex. 1006). Pet., pp. 21-22. The Petition cites to only the
`
`Abstract of Cousins for support. See id. Although the Abstract does describe the
`
`-8-
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 15 of 43 PageID #: 1543
`IPR2021-00917
`Patent 7,933,431
`
`
`device of Cousins as being handheld, it does not describe any of the functionality of
`
`claim 7, nor does it describe the functionality of Doi. See Ex. 1006, Abstract.
`
`It would not have been obvious to a person of ordinary skill in the art to
`
`modify Doi, based on Cousins, such that the device of Doi would be handheld as the
`
`Petition asserts. See Pet., pp. 21-22 (citing Pet., § VI.A.1.c).
`
`First, the references do not teach, suggest, or contain motivation to use a
`
`handheld device as recited in claim 7. The Petition incorrectly states that “Cousins
`
`provides an explicit teaching, suggestion, or motivation to use its hand-held device
`
`in a manner consistent with the teachings of Doi; for example, Cousins states that its
`
`imaging device can be used with hand gestures for input to a computer.” See Pet.,
`
`p. 19 (citing Ex. 1006, 13:33-47). This is a mischaracterization of the Cousins
`
`reference. The cited portion of Cousins, column 13, lines 33-47, describes “using
`
`an imaging device 100 along with an expert system” to, for example, read sign
`
`language. See Ex. 1006, 13:33-47 (emphasis added). Imaging device 100 is the
`
`handheld device depicted in Figure 2 of Cousins.
`
`-9-
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 16 of 43 PageID #: 1544
`IPR2021-00917
`Patent 7,933,431
`
`
`
`
`
`Ex. 1006, Fig. 2.
`
`Cousins expressly describes using an “expert system” other than the alleged
`
`handheld device (i.e., imaging device 100) to allegedly perform the functions recited
`
`in claim 7. To the extent those functions are performed, they are performed in a
`
`device that is physically separate from what the Petition identifies as the handheld
`
`device. Thus, Cousins teaches away from modifying Doi to a handheld device.
`
`Second, the alleged “implicit motivation to combine the teachings of Doi and
`
`Cousins” is generic and non-specific. See Pet., pp. 19-20. The Petition merely
`
`alleges that there would have been implicit motivation to combine the Doi and
`
`Cousins references to make a product that is smaller. See id., p. 20. But the Petition
`
`provides no support. Moreover, to the extent that either Cousins or Doi disclose the
`
`-10-
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 17 of 43 PageID #: 1545
`IPR2021-00917
`Patent 7,933,431
`
`
`remaining functionality recited in claim 7, the alleged “implicit motivation” is
`
`contradicted by the fact that both Cousins and Doi require external, non-handheld
`
`devices to perform that functionality. Thus, the alleged “implicit motivation” is
`
`nothing more than impermissible hindsight.
`
`Third, the Petition alleges, without support, that “combining the teachings of
`
`Doi and applying them to the handheld apparatus of Cousins would have been no
`
`more than the simple substitution of one known element for another, and would have
`
`been obvious at the time of the ’431 Patent.” See Pet., pp. 20-21. That only support
`
`for that allegation is the same mischaracterization of the Cousins reference. See id.
`
`But, as shown above, Cousins expressly discloses the use of a separate “expert
`
`system” to allegedly perform the functions recited in claim 7. So the assertion that
`
`modifying Doi in view of Cousins would be a simple substitution is baseless.
`
`Moreover, the alleged support from the Schmandt declaration is conclusory and
`
`based solely on the same mischaracterization of Cousins. See Ex. 1003, ¶¶80-81.
`
`Fourth, there is no evidence that there would have been a reasonable
`
`expectation of success in combining Doi and Cousins. To the contrary, both
`
`references clearly require a separate, non-handheld system to allegedly perform the
`
`functionality recited in claim 7.
`
`Fifth, Cousins cannot be used to modify Doi because it is non-analogous art.
`
`A reference qualifies as prior art for an obviousness determination only when it is
`
`-11-
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 18 of 43 PageID #: 1546
`IPR2021-00917
`Patent 7,933,431
`
`
`analogous to the claimed invention. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir.
`
`2011). Two separate tests define the scope of analogous prior art: (1) whether the
`
`art is from the same field of endeavor, regardless of the problem addressed and, (2)
`
`if the reference is not within the field of the inventor’s endeavor, whether the
`
`reference still is reasonably pertinent to the particular problem with which the
`
`inventor is involved. See Donner Technology, LLC v. Pro Stage Gear, LLC, No.
`
`2020-1104, slip op. at 7 (Fed. Cir. Nov. 9, 2020). When addressing whether a
`
`reference is analogous art with respect to a claimed invention under a reasonable-
`
`pertinence theory, the problems to which both relate must be identified and
`
`compared. See id. at 8. Cousins fails both tests.
`
`Regarding the first test for analogous art, in the field of invention section,
`
`Cousins expressly discloses: “The invention relates generally to a multi-purpose
`
`portable imaging device, and more particularly to a device for displaying images
`
`from sensors embedded in a hand-held device. . . .” Ex. 1006, 1:19-22. Cousins
`
`further describes itself as “a multi-purpose portable imaging device.” Id., 4:15-16.
`
`Those imaging devices include X-rays, MRI, sonar, and radar systems. See id., 1:34-
`
`45. The detailed description further describes the design of an imaging device and
`
`the use of the imaging device in a variety of fields including medicine, construction,
`
`geology, archeology, airport security, forensic investigations, etc. See, e.g., id. at
`
`-12-
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 19 of 43 PageID #: 1547
`IPR2021-00917
`Patent 7,933,431
`
`
`6:13-25. Accordingly, the field of endeavor for Cousins is imaging devices and
`
`image generation.
`
`In contrast, Petitioner contends that the field of endeavor of the ’431 Patent
`
`(Ex. 1001) is input devices for computers such as handheld devices. See Pet., p. 19;
`
`see also Ex. 1003, ¶ 77. Thus, based on Petitioner’s own characterization of the ’431
`
`Patent, Cousins is non-analagous art because it is not from the same field of
`
`endeavor.
`
`Regarding the second test for analogous art, Petitioner has the burden of
`
`identifying and comparing the problems to which both the ’431 Patent and Cousins
`
`relate. Petitioner has done neither. See Pet., pp. 18-21. Thus, Petitioner has not met
`
`this burden. As a result, Cousins fails the second test.
`
`For at least these reasons, neither Doi nor Cousins, nor the combination
`
`teaches or suggests claim element [7.0].
`
`ii.
`[7.2] 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
`Claim element [7.2] recites “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.” The Petition contends that “image input unit 10” disclosed
`
`in Doi discloses this limitation. Pet., p. 23. It does not. First, as a preliminary
`
`matter, the Petition fails to identify any housing in Doi for claim element [7.1]. Pet,
`
`-13-
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 20 of 43 PageID #: 1548
`IPR2021-00917
`Patent 7,933,431
`
`
`p. 22. Second, Figure 3, which is reproduced below, depicts a display device (20)
`
`and the housing (8) of the image input unit (1) as being physically separate. Id.,
`
`7:63-64.
`
`
`
`Ex. 1005, Fig. 3. Third, claim element [7.3] requires that the “computer
`
`means” be located within the same housing that the “camera means” is associated
`
`with. Compare claim element [7.2] with claim element [7.3]. The Petition provides
`
`no citations to Doi to support its bare allegation that the alleged “computer means”
`
`is located within display device (20), which the Petition identifies (without prior
`
`identification for claim element [7.1]) as the alleged housing. See Pet., p. 25 (“A
`
`POSITA would have recognized Doi’s computer means to be within the housing
`
`depicted as element 20 in Figure 3, or alternatively, within the housing depicted as
`
`element 8.”). To the contrary, Doi discloses many units (e.g., “image input unit,”
`
`“image storage unit,” “shape interpreting unit,” “interpretation rule storage unit,”
`
`-14-
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 21 of 43 PageID #: 1549
`IPR2021-00917
`Patent 7,933,431
`
`
`“cursor switching unit,” “presenting unit”), none of which are described as being
`
`within the same housing, let alone being within the same handheld device. See, e.g.,
`
`Ex. 1005, 7:13-40, Fig. 1.
`
`The Petition attempts to address this failure of Doi by relying on the Cousins
`
`reference. See Pet., pp. 23-24. Cousins fails for similar reasons. The alleged camera
`
`means is part of the housing of imaging device 100. See id., p. 24. But the Petition
`
`fails to allege, let alone show that “processor array 400” in imaging device 100
`
`performs the recited functions for the “computer means” under Petitioner’s proposed
`
`construction. See id., pp. 25-26.
`
`Moreover, a skilled artisan would not have been motivated to combine Dao
`
`and Cousins for the same reasons set forth above for claim element [7.0]. For at
`
`least these reasons, neither Doi nor Cousins, nor the combination teaches or suggests
`
`claim element [7.2].
`
`iii.
`[7.3] computer means within said housing for analyzing
`said image to determine information concerning a position or
`movement of said object
`Claim element [7.3] recites “computer means within said housing for
`
`analyzing said image to determine information concerning a position or movement
`
`of said object.” The Petition does not clearly identify what the alleged “computer
`
`means” is in Doi. But it proceeds to, without citing any support in Doi, to allege that
`
`a “POSITA would have recognized Doi’s computer means to be within the housing
`
`-15-
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 22 of 43 PageID #: 1550
`IPR2021-00917
`Patent 7,933,431
`
`
`depicted as element 20 in Figure 3, or alternatively, within the housing depicted as
`
`element 8.” See Pet., p. 25. That Petitioner has to identify the location of the
`
`computer means in the alternative highlights the fact that Petitioner has no basis to
`
`allege that the alleged “computer means” in Doi is within the housing.
`
`Petitioner attempts to address this shortcoming of Doi by relying on Cousins.
`
`See Pet., p. 26. Cousins fails to disclose this limitation because the Petition fails to
`
`allege, let alone show that the “processor array 400” disclosed in Cousins performs
`
`the recited functions identified by Petitioner for the term “computer means within
`
`said housing . . . .” Compare Pet., p. 14 with id., pp. 26-27.
`
`Moreover, a skilled artisan would not have been motivated to combine Dao
`
`and Cousins for the same reasons set forth above for claim element [7.0]. For at
`
`least these reasons, neither Doi nor Cousins, nor the combination teaches or suggests
`
`claim element [7.3].
`
`iv.
`[7.4] means for controlling a function of said apparatus
`using said information
`Claim element [7.4] recites “means for controlling a function of said apparatus
`
`using said information.” Claim 7 requires that the “computer means” be part of a
`
`handheld computer apparatus. The Petition contends that this element is met by the
`
`“interpretation rule storage unit” in Doi, but again fails to identify the physical
`
`-16-
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 23 of 43 PageID #: 1551
`IPR2021-00917
`Patent 7,933,431
`
`
`location of that unit within Doi, let alone show that it is part of a handheld computer
`
`apparatus. See Pet., pp. 28-30.
`
`Moreover, a skilled artisan would not have been motivated to combine Dao
`
`and Cousins for the same reasons set forth above for claim element [7.0]. For at
`
`least these reasons, neither Doi nor Cousins, nor the combination teaches or suggests
`
`claim element [7.4].
`
`For at least the reasons given above, the combination of Doi and Cousins fails
`
`to render independent claim 7 unpatentable.
`
`2.
`Dependent Claim 8
`Dependent claim 8 recites “Apparatus according to claim 7, wherein said
`
`object is a finger.” Claim 8 depends from and adds limitations to claim 7. The
`
`combination of Doi and Cousins fails to render claim 7 unpatentable, therefore, the
`
`combination of Doi and Cousins fails to render dependent claim 8 unpatentable for
`
`at least the same reasons.
`
`3.
`Dependent Claim 9
`Dependent claim 9 recites “Apparatus according to claim 7, further including
`
`a display function which is controlled.” Claim 9 depends from and adds limitations
`
`to claim 7. The combination of Doi and Cousins fails to render claim 7 unpatentable,
`
`therefore, the combination of Doi and Cousins fails to render dependent claim 9
`
`unpatentable for at least the same reasons.
`
`-17-
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 24 of 43 PageID #: 1552
`IPR2021-00917
`Patent 7,933,431
`
`
`
`4.
`Dependent Claim 10
`Dependent claim 10 recites “Apparatus according to claim 9, wherein said
`
`display is 3D display.” Claim 10 depends from and adds limitations to dependent
`
`claim 9 and independent claim 7. The combination of Doi and Cousins fails to
`
`render claims 7 and 9 unpatentable, therefore, the combination of Doi and Cousins
`
`fails to render dependent claim 10 unpatentable for at least the same reasons.
`
`5.
`Dependent Claim 11
`Dependent claim 11 recites “Apparatus according to claim 7, further including
`
`means for transmitting information.” Claim 11 depends from and adds limitations
`
`to claim 7. The combination of Doi and Cousins fails to render claim 7 unpatentable,
`
`therefore, the combination of Doi and Cousins fails to render dependent claim 11
`
`unpatentable for at least the same reasons.
`
`Moreover, the Petition fails to provide any analysis regarding whether
`
`Cousins discloses this limitation under Petitioner’s proposed construction of the term
`
`“means for transmitting information.” See Pet., p. 32. The Petition asserts that the
`
`recited function for this limitation is “transmitting information.” See id., p. 17. The
`
`Petitioner further asserts that the corresponding structure for performing the recited
`
`function is “a mobile phone link and equivalents thereof.” See id.
`
`The Petition states that Cousins performs the recited function, but fails to
`
`address whether Cousins discloses the same corresponding structure that the Petition
`
`-18-
`
`

`

`Case 2:21-cv-00040-JRG Document 70-15 Filed 09/02/21 Page 25 of 43 PageID #: 1553
`IPR2021-00917
`Patent 7,933,431
`
`
`identifies in Petitioner’s proposed construction. See Pet., pp. 47-48. The Petition
`
`cites to a single portion of Cousins that discloses “using ground-base [sic] wireless
`
`or satellite technology.” See id., p. 48 (citing Ex. 1006, 5:26-29). The Petition fails
`
`to identify a “mobile phone link” in Cousins.2 See id. Nor does it contain any
`
`analysis regarding whether the “ground-base [sic] wireless or satellite technology”
`
`disclosed in Cousins is an equivalent of a mobile phone link, as proposed by
`
`Petitioner. See id.
`
`6.
`Dependent Claim 12
`Dependent claim 12 recites “Apparatus according to claim 7, further including
`
`a light source for illuminating said object.” Claim 12 depends from and adds
`
`limitations to claim 7. The combination of Doi and Cousins fails to render claim 7
`
`unpatentable, therefore, the combination of Doi and Cousins fails to render
`
`dependent claim 12 unpatentable for at least the same reasons.
`
`E. Ground 2 – The Combination of Doi, Cousins, and Parulski Does
`Not Render Claim 13 Obvious
`
`Dependent claim 13 depends from and adds limitations to claim 7. For at least
`
`the reasons discussed above with respect to Ground 1, the combination of Doi and
`
`
`2 Indeed, the Petition concedes that neither Doi nor Cousins discloses adds another
`
`reference to the combination, Parulski, as allegedly disclosing the “cellular phone”
`
`required by claim 13. See Pet., pp. 50-51.
`
`-19-
`
`

`

`