• Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Nov 30, 2022 · IPR2022-00359 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–10, 12, and 14–31 are unpatentable as obvious; claims 11 and 13 were not shown unpatentable because Numazaki does not teach or suggest their transmission and cellular-phone limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We apply these principles to the Petition’s challenges. 2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’431 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1008 ¶¶ 30–32). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’431 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “Patent Owner argues that the preambles should be limiting because they recite essential structure or steps and are “necessary to give life, meaning, and vitality” to the claims. PO Resp. 6 (quoting Acceleration Bay, LLC v. Activision Blizzard, Inc., 908 F.3d 765, 770 (Fed. Cir. 2018)). Specifically, Patent Owner asserts that each claim includes one or more limitations that refer back to the preamble’s “handheld computing device” or “handheld computer apparatus” for antecedent basis. Id. at 6–7. Patent Owner further argues that the ’431 patent discloses different embodiments, with some embodiments being in the form of a computer and some embodiments being in the form of a handheld device. Id. at 7 (citing Ex. 1001, 12:59–13:7, Fig. 10A). Patent Owner contends that the claims are directed to the latter embodiments related to a handheld device and, therefore, “the preamble is necessary to give life, meaning, and vitality to claims 1, 7, and 14, consistent with the embodiments that the inventor chose to claim.” Id. We agree that the preambles of claims 1, 7, and 14 are limiting. This is primarily because the body of each claim includes “said device” or “said apparatus” which refers back to the preamble and is understood with reference thereto. For example, the last clause of claim 7 states: “means for controlling a function of said apparatus using said information.” Ex. 1001, 26:4–5 (emphasis added). “Said apparatus” derives antecedent basis from the “[h]andheld computer apparatus” recited in the preamble. Moreover, the “means for controlling a function of said apparatus” is understood because of this reference to the handheld computer apparatus. The limitations of claims 1 and 14 are similar and so this logic applies equally to these claims as well. Thus, we agree that the preamble recites essential structure and is “necessary to give life, meaning, and vitality” to claims 1, 7, and 14.” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “b) Camera Means Petitioner asserts that, though claim 7 recites “camera means,” it is not a means-plus-function limitation under §112 ¶ 6. Pet. 6. Petitioner argues that “a PHOSITA would have considered ‘camera means associated with said housing’ to have a sufficiently definite meaning as the name for structure.” Id. (citing Ex. 1008 ¶ 36). Petitioner further argues that “all optical sensors obtain images by capturing light, so the claimed function is simply describing the general process that all optical sensors employ to obtain images of objects.” Id. (citing Ex. 1008 ¶ 36). “Patent Owner agrees” with Petitioner’s construction PO. Resp. 7. We accept Petitioner’s construction as consistent with the current record.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner

    “c) Computer Means Petitioner contends that claim 7’s limitation of “computer means within said housing for analyzing said image to determine information concerning a position or movement of said object” is a means-plus-function limitation under §112 ¶ 6. Pet. 7. Petitioner argues that the limitation’s function is analyzing an image “to determine positioning or movement of an object.” Id. Petitioner argues that the corresponding structure “includes a computer/processor programmed (1) to identify either natural or artificial features on an object as described . . . or (2) to track the movement using one of the disclosed methods.” Id. at 9; see id. at 8–9 (discussing the disclosure of the ’431 patent) (citing Ex. 1001, 3:38–47, 3:57–62, 4:9–14, 5:2–23, 6:64–7:13, 8:40–59, 11:16–35). Petitioner also argues that “objects” should be construed to mean “both separate objects held/controlled by the user and also part of the user’s body, such as a user’s finger or hand.” Id. at 8; see id. at 7–8 (citing Ex. 1001, 3:39–41, 3:48–50, claims 7–8). “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. We accept Petitioner’s construction as consistent with the current record.10 d) Means for Controlling a Function Petitioner argues that claim 7’s limitation of “means for controlling a function of said apparatus using said information” is a means-plus-function” slip op. at 10

  Patent outcomesUS 7,933,431 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,933,431
• Apple, Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., And Google LLC v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Nov 30, 2022 · IPR2022-00091 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–10, 12, and 14–31 are unpatentable as obvious; claims 11 and 13 were not shown unpatentable because Numazaki did not teach or suggest their cellular phone or transceiver limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We apply these principles to the Petition’s challenges. 2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’431 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1008 ¶¶ 30–32). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’431 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “Patent Owner argues that the preambles should be limiting because they recite essential structure or steps and are “necessary to give life, meaning, and vitality” to the claims. PO Resp. 6 (quoting Acceleration Bay, LLC v. Activision Blizzard, Inc., 908 F.3d 765, 770 (Fed. Cir. 2018)). Specifically, Patent Owner asserts that each claim includes one or more limitations that refer back to the preamble’s “handheld computing device” or “handheld computer apparatus” for antecedent basis. Id. at 6–7. Patent Owner further argues that the ’431 patent discloses different embodiments, with some embodiments being in the form of a computer and some embodiments being in the form of a handheld device. Id. at 7 (citing Ex. 1001, 12:59–13:7, Fig. 10A). Patent Owner contends that the claims are directed to the latter embodiments related to a handheld device and, therefore, “the preamble is necessary to give life, meaning, and vitality to claims 1, 7, and 14, consistent with the embodiments that the inventor chose to claim.” Id. We agree that the preambles of claims 1, 7, and 14 are limiting. This is primarily because the body of each claim includes “said device” or “said apparatus” which refers back to the preamble and is understood with reference thereto. For example, the last clause of claim 7 states: “means for controlling a function of said apparatus using said information.” Ex. 1001, 26:4–5 (emphasis added). “Said apparatus” derives antecedent basis from the “[h]andheld computer apparatus” recited in the preamble. Moreover, the “means for controlling a function of said apparatus” is understood because of this reference to the handheld computer apparatus. The limitations of claims 1 and 14 are similar and so this logic applies equally to these claims as well. Thus, we agree that the preamble recites essential structure and is “necessary to give life, meaning, and vitality” to claims 1, 7, and 14.” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner construction§112(f) does not applyDecided for petitioner

    “b) Camera Means Petitioner asserts that, though claim 7 recites “camera means,” it is not a means-plus-function limitation under §112 ¶ 6. Pet. 6. Petitioner argues that “a PHOSITA would have considered ‘camera means associated with said housing’ to have a sufficiently definite meaning as the name for structure.” Id. (citing Ex. 1008 ¶ 36). Petitioner further argues that “all optical sensors obtain images by capturing light, so the claimed function is simply describing the general process that all optical sensors employ to obtain images of objects.” Id. (citing Ex. 1008 ¶ 36). “Patent Owner agrees” with Petitioner’s construction PO. Resp. 7. We accept Petitioner’s construction as consistent with the current record.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed petitioner construction§112(f) appliesDecided for petitioner

    “c) Computer Means Petitioner contends that claim 7’s limitation of “computer means within said housing for analyzing said image to determine information concerning a position or movement of said object” is a means-plus-function limitation under §112 ¶ 6. Pet. 7. Petitioner argues that the limitation’s function is analyzing an image “to determine positioning or movement of an object.” Id. Petitioner argues that the corresponding structure “includes a computer/processor programmed (1) to identify either natural or artificial features on an object as described . . . or (2) to track the movement using one of the disclosed methods.” Id. at 9; see id. at 8–9 (discussing the disclosure of the ’431 patent) (citing Ex. 1001, 3:38–47, 3:57–62, 4:9–14, 5:2–23, 6:64–7:13, 8:40–59, 11:16–35). Petitioner also argues that “objects” should be construed to mean “both separate objects held/controlled by the user and also part of the user’s body, such as a user’s finger or hand.” Id. at 8; see id. at 7–8 (citing Ex. 1001, 3:39–41, 3:48–50, claims 7–8). “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. We accept Petitioner’s construction as consistent with the current record.10 d) Means for Controlling a Function Petitioner argues that claim 7’s limitation of “means for controlling a function of said apparatus using said information” is a means-plus-function” slip op. at 10

  Patent outcomesUS 7,933,431 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,933,431
• Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Nov 30, 2022 · IPR2021-00920 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–10, 12, and 14–31 are unpatentable as obvious; claims 11 and 13 were not shown unpatentable because Numazaki does not teach or suggest their limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(‘PHOSITA’) at the time of the ’431 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1008 ¶¶ 30–32). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’431 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “they recite essential structure or steps and are “necessary to give life, meaning, and vitality” to the claims. PO Resp. 6 (quoting Acceleration Bay, LLC v. Activision Blizzard, Inc., 908 F.3d 765, 770 (Fed. Cir. 2018)). Specifically, Patent Owner asserts that each claim includes one or more limitations that refer back to the preamble’s “handheld computing device” or “handheld computer apparatus” for antecedent basis. Id. at 6–7. Patent Owner further argues that the ’431 patent discloses different embodiments, with some embodiments being in the form of a computer and some embodiments being in the form of a handheld device. Id. at 7 (citing Ex. 1001, 12:59–13:7, Fig. 10A). Patent Owner contends that the claims are directed to the latter embodiments related to a handheld device and, therefore, “the preamble is necessary to give life, meaning, and vitality to claims 1, 7, and 14, consistent with the embodiments that the inventor chose to claim.” Id. We agree that the preambles of claims 1, 7, and 14 are limiting. This is primarily because the body of each claim includes “said device” or “said apparatus” which refers back to the preamble and is understood with reference thereto. For example, the last clause of claim 7 states: “means for controlling a function of said apparatus using said information.” Ex. 1001, 26:4–5 (emphasis added). “Said apparatus” derives antecedent basis from the “[h]andheld computer apparatus” recited in the preamble. Moreover, the “means for controlling a function of said apparatus” is understood because of this reference to the handheld computer apparatus. The limitations of claims 1 and 14 are similar and so this logic applies equally to these claims as well. Thus, we agree that the preamble recites essential structure and is “necessary to give life, meaning, and vitality” to claims 1, 7, and 14.” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “b) Camera Means Petitioner asserts that, though claim 7 recites “camera means,” it is not a means-plus-function limitation under §112 ¶ 6. Pet. 6. Petitioner argues that “a PHOSITA would have considered ‘camera means associated with said housing’ to have a sufficiently definite meaning as the name for structure.” Id. (citing Ex. 1008 ¶ 36). Petitioner further argues that “all optical sensors obtain images by capturing light, so the claimed function is simply describing the general process that all optical sensors employ to obtain images of objects.” Id. (citing Ex. 1008 ¶ 36). “Patent Owner agrees” with Petitioner’s construction PO. Resp. 7. We accept Petitioner’s construction as consistent with the current record.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner

    “c) Computer Means Petitioner contends that claim 7’s limitation of “computer means within said housing for analyzing said image to determine information concerning a position or movement of said object” is a means-plus-function limitation under §112 ¶ 6. Pet. 7. Petitioner argues that the limitation’s function is analyzing an image “to determine positioning or movement of an object.” Id. Petitioner argues that the corresponding structure “includes a computer/processor programmed (1) to identify either natural or artificial features on an object as described . . . or (2) to track the movement using one of the disclosed methods.” Id. at 9; see id. at 8–9 (discussing the disclosure of the ’431 patent) (citing Ex. 1001, 3:38–47, 3:57–62, 4:9–14, 5:2–23, 6:64–7:13, 8:40–59, 11:16–35). Petitioner also argues that “objects” should be construed to mean “both separate objects held/controlled by the user and also part of the user’s body, such as a user’s finger or hand.” Id. at 8; see id. at 7–8 (citing Ex. 1001, 3:39–41, 3:48–50, claims 7–8). “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. We accept Petitioner’s construction as consistent with the current record.10 d) Means for Controlling a Function Petitioner argues that claim 7’s limitation of “means for controlling a function of said apparatus using said information” is a means-plus-function 10 In related IPR2021-00917 the petitioner there offered a slightly different construction. See IPR2021-00917, Paper 31, 11–12. The parties do not address the slight differences and we determine that the outcome here is not construction dependent. limitation under §112 ¶ 6. Pet. 10. According to Petitioner, the limitation’s function is “controlling a function of the apparatus using information about the object’s location or movement.” Id. Petitioner argues that the corresponding structure “is a processor programmed to perform the specific algorithms that accomplish this function” which “includes at least [the] Fig. 9 disclosure.” Id. at 10–11. “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. However, as discussed above, we determine that “said apparatus” refers to the handheld computer apparatus in the preamble. Thus, we accept Petitioner’s construction with the added requirement that the general purpose computer be a handheld computer apparatus. e) Means for Transmitting Information Petitioner asserts that claim 11’s limitation of “means for transmitting information” is a means-plus-function limitation under §112 ¶ 6. Pet. 11. Petitioner argues that the ’431 patent teaches the structure for performing the limitation’s function of “transmitting information” is a “wireless cellular transceiver” and thus the corresponding structure required by the claim “includes at least a wireless cellular transceiver.” Id. at 11–12 (citing Ex. 1001, 12:59–13:3). “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. We accept Petitioner’s construction as consistent with the current record.11” slip op. at 10

  Patent outcomesUS 7,933,431 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,933,431
• Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Nov 28, 2022 · IPR2022-00360 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–6, 8–16, 18–26, and 28–30 are unpatentable as obvious; claims 7, 17, and 27 were not shown unpatentable because Numazaki teaches away from using ring or other targets.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’079 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 4 (citing Ex. 1010 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’079 patent and prior art of record. We adopt this definition for the purposes of this Final Decision.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “the light source is used is not a sufficient reason for us to read a limitation into the claims from the Specification. If the specification “reveal[s] a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)); see also Reply 19. However, this is not the case here. Patent Owner does not identify anywhere in the Specification where “light source” or “plurality of light emitting diodes” are defined as “the light source illuminates the gesture by having two or more (i.e., a plurality) LEDs of the light source emit light at the same time.” For these reasons we decline to adopt Patent Owner’s claim construction. We determine that the added limitation in claims 3, 15, and 23 should be read according to its plain and ordinary meaning. In other words, “the light source includes a plurality of light emitting diodes,” simply means exactly what it says “the light source includes a plurality of light emitting diodes.”” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentableMixed

    “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable

    “Petitioner argues that Numazaki ’863 teaches using a plurality of light emitting diodes to illuminate a hand gesture and to control a computer based on the gesture. Pet. 37. Petitioner also identifies a number of reasons to modify Numazaki’s light source to use Numazaki’s ’863’s plurality of light emitting diodes as the light sources are used for similar purposes. Id. at 38– 39. Patent Owner does not contest Petitioner’s positions in the Petition, other than to argue that the combination does not teach the claim limitation under Patent Owner’s construction. PO Resp. 20–22. Patent Owner further admits that Numazaki ’863 teaches a plurality of light emitting diodes used to illuminate an object. Id. at 21 (citing Ex. 1005, 16:36–57, Fig. 4). As we previously rejected Patent Owner’s attempt to read limitations from the Specification into the claims, Patent Owner’s arguments here do not apply to the requirements of the claims. We have reviewed Petitioner’s assertions with respect to these claims and the supporting evidence, and determine that Petitioner has established by a preponderance of the evidence that claims 3, 15, and 23 are unpatentable.” slip op. at 24

  Patent outcomesUS 8,553,079 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,553,079
• Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Nov 28, 2022 · IPR2022-00090 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–6, 8–16, 18–26, and 28–30 are unpatentable as obvious; claims 7, 17, and 27 were not shown unpatentable because Numazaki teaches away from using targets.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “The mere fact that the Specification provides an example as to how the light source is used is not a sufficient reason for us to read a limitation into the claims from the Specification. If the specification “reveal[s] a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)); see also Reply 19. However, this is not the case here. Patent Owner does not identify anywhere in the Specification where “light source” or “plurality of light emitting diodes” are defined as “the light source illuminates the gesture by having two or more (i.e., a plurality) LEDs of the light source emit light at the same time.” For these reasons we decline to adopt Patent Owner’s claim construction. We determine that the added limitation in claims 3, 15, and 23 should be read according to its plain and ordinary meaning. In other words, “the light source includes a plurality of light emitting diodes,” simply means exactly what it says “the light source includes a plurality of light emitting diodes.”” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’079 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 4 (citing Ex. 1010 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’079 patent and prior art of record. We adopt this definition for the purposes of this Final Decision.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentableNot shown unpatentable

    “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “Petitioner argues that Numazaki ’863 teaches using a plurality of light emitting diodes to illuminate a hand gesture and to control a computer based on the gesture. Pet. 37. Petitioner also identifies a number of reasons to modify Numazaki’s light source to use Numazaki’s ’863’s plurality of light emitting diodes as the light sources are used for similar purposes. Id. at 38– 39. Patent Owner does not contest Petitioner’s positions in the Petition, other than to argue that the combination does not teach the claim limitation under Patent Owner’s construction. PO Resp. 20–22. Patent Owner further admits that Numazaki ’863 teaches a plurality of light emitting diodes used to illuminate an object. Id. at 21 (citing Ex. 1005, 16:36–57, Fig. 4). As we previously rejected Patent Owner’s attempt to read limitations from the Specification into the claims, Patent Owner’s arguments here do not apply to the requirements of the claims. We have reviewed Petitioner’s assertions with respect to these claims and the supporting evidence, and determine that Petitioner has established by a preponderance of the evidence that claims 3, 15, and 23 are unpatentable.” slip op. at 24

  Patent outcomesUS 8,553,079 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,553,079
• Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Nov 28, 2022 · IPR2021-00922 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–6, 8–16, 18–26, and 28–30 are unpatentable as obvious; claims 7, 17, and 27 were not shown unpatentable because Numazaki teaches away from using ring or other targets.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(‘PHOSITA’) at the time of the ’079 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 4 (citing Ex. 1010 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’079 patent and prior art of record. We adopt this definition for the purposes of this Final Decision.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Claim construction starts with an analysis of the claim language itself. Sjolund v. Musland, 847 F.2d 1573, 1582 (Fed. Cir. 1988) (“[T]he claims define the invention.”). Claim 1 includes “providing a light source adapted to direct illumination through a work volume above the light source,” a “camera being fixed relative to the light source,” and “determining . . . the gesture performed in the work volume and illuminated by the light source.” Ex. 1001, 13:3–9. Claim 3 adds that “the light source includes a plurality of light emitting diodes.” Id. at 13:12–13. Reading claims 1 and 3 it can be seen that Patent Owner’s construction is not apparent or implied from the claim language. Neither claim requires, for example, that the gesture be illuminated by 100% of the light source, or by at least two LEDs of the light source. Claim 1 merely states that the gesture be “illuminated by the light source.” The amount of illumination is not specified.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentableNot shown unpatentable

    “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “The testimony of Petitioner’s declarant cannot overcome the strong “disparagement” that Petitioner admits Numazaki makes against the use of rings or other added targets. This is not a case where Numazaki merely expresses a general preference for an alternative invention, rather Numazaki clearly criticizes, discredits, and discourages the use of rings and other targets. In Petitioner’s own words, “Numazaki[’s] . . . teaching[s] . . . can obviate the need for these targets.” Tr. 28. Neither Petitioner nor Petitioner’s declarant address why one of ordinary skill in the art would have modified Numazaki to use a ring, in view of Petitioner’s admission that “Numazaki[’s] . . . teaching[s] . . . can obviate the need for these targets.” Id. Petitioner also fails to explain how the teachings of Numazaki related to specialized rings supports it conclusion related to a “small [generic] ring,” similar to what people routinely wear. Pet. 23–24. Numazaki discusses rings in specialized colors, as well as “color markers,” and “light emitting elements.” Ex. 1004, 3:7–9, 26–31. Neither Petitioner nor Petitioner’s declarant explain the logical steps between Numazaki’s disclosure and a “small [generic] ring” similar to what people routinely wear, or why one of ordinary skill in the art would have considered them to be the same or similar. For these reasons, we determine that Petitioner has not shown that” slip op. at 22

  Patent outcomesUS 8,553,079 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,553,079
• One World Technologies, Inc., D/B/A Techtronic Industries Power Equipment v. The Chamberlain Group, Inc.Some claims unpatentable
  PTAB · Oct 24, 2018 · IPR2017-00126 · APJ John F Horvath · IPR · Final written decision

  Claims 1–4, 7, 9–12, and 15 are unpatentable as obvious over Doppelt, AAPA, and Jacobs; claims 8 and 16 were not shown unpatentable on either ground.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedMotion to exclude, grantedMixed

    “experience, knowledge, and training to offer expert testimony in this proceeding. Accordingly, Petitioner’s request to exclude his declaration in its entirety is denied.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. Level of Skill in the Art Relying on the opinion of its declarant, Mr. Lipoff, Petitioner argues a” slip op. at 21

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “sufficient knowledge, skill, experience, training, or education in systems with embedded microprocessors to establish an adequate relationship between his experience and the invention claimed in the ’319 patent. Accordingly, Dr. Davis is qualified to provide expert testimony in this proceeding. See Fed. R. Evid. 702; Montgomery Ward, 594 F.3d at 1373. Through his uncontroverted testimony, Dr. Davis has established that he has earned a Ph.D. in electrical engineering, has more than 30 years of research experience in computer architecture, digital design, and embedded microprocessors, has authored numerous technical articles on these topics, and has previously provided “expert witness testimony in cases involving embedded computer systems that are similar to the ones envisioned in the ’319 patent.” Ex. 2007 ¶¶ 6, 8, 16–17. Although Dr. Davis has no direct experience with garage door openers, he has experience with systems he considers to be related, such as “elevator controllers where you’ve got to worry about not just opening and closing the doors but the movement of the carriage or the cab that goes up and down . . . that you don’t account for in a garage door.” Ex. 1019, 34:23–35:6. In short, Dr. Davis has demonstrated that he possesses sufficient experience, knowledge, and training to offer expert testimony in this proceeding. Accordingly, Petitioner’s request to exclude his declaration in its entirety is denied.” slip op. at 13

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Accordingly, based on the evidence in this proceeding, including the Specification and claims of the ’319 patent, the specification and claims of the ’968 patent, the representations Patent Owner made to the ITC regarding the problem confronting the inventors of the ’319 patent, and Dr. Davis’ cross-examination testimony, we find the problem addressed by the inventors of the ’319 patent was how to include microcontrollers in the wall consoles of barrier movement operators that could communicate with the microcontrollers in the motor drive units over digital data buses. We further find that Jacobs teaches a solution to this very problem. In particular, Jacobs teaches a motor-driven system for moving a window shade barrier that includes a wall console (control 31/630) having a microcontroller (microprocessor 800) that sends instructions to a motor drive unit (control 45) having a microcontroller (microcontroller 540) over a digital data bus (serial link 652) to control a motor (motor 215) to move the barrier up and down. Ex. 1005, 5:15–19, 12:42–48, 13:37–39, 15:5–15, Figs. 20, 21, 24. Accordingly, Jacobs is analogous art to the invention claimed in the ’319 patent because it teaches a solution that is “reasonably pertinent to the particular problem with which the inventor was involved.” Deminski, 796 F.2d at 442. In particular, Jacobs would have logically commended itself to the attention of a person of ordinary skill in the art looking to solve the problem of including microcontrollers in the wall consoles of barrier movement operators that could communicate with the microcontrollers in the motor drive units over digital data buses. See Clay, 966 F.2d at 659. For the foregoing reasons, we conclude that Jacobs qualifies as” slip op. at 34

  Patent outcomesUS 7,161,319 mixed
  § 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,161,319
• Comcast Cable Communications, LLC v. Rovi Guides, Inc.Some claims unpatentable
  PTAB · Sep 10, 2018 · IPR2017-00934 · APJ Stacy B Margolies · IPR · Final written decision

  Claims 1, 4–11, and 14–24 are unpatentable as obvious; claims 2, 3, 12, and 13 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “B. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “shows the relation between the content being display and the current time, Petitioner shows that a person of ordinary skill in the art would have been motivated to incorporate Vallone’s teachings to improve the interface by making it visually intuitive and interactive. Ex. 1011 ¶¶ 158, 159, 171, 177, 178. Dr. Rhyne’s testimony is credible and persuasively supported by the teachings of the underlying references. See Ex. 1011 ¶¶ 158, 159, 171, 177, 178; Ex. 1002 ¶¶ 6, 7, 88, 142; Ex. 1003, Fig. 26, 1:44–49, 1:53–57, 18:32– 44, 19:1–3, 20:19–22. For example, as stated above, Vallone expressly discloses applying its interactive trick play bar more broadly to any device in which physical position in the material is readily ascertainable, such as a VCR. Ex. 1003, 20:19–22. In addition, Vallone describes the known problem of multimedia devices lacking interactivity and intuitive devices. Ex. 1003, 1:11–49. One of ordinary skill in the art would have been aware of this problem and motivated to improve Wood’s digital VCR accordingly. Ex. 1011 ¶¶ 158, 159, 171, 177, 178. In addition, as Dr. Rhyne explains, an ordinarily skilled artisan would have been motivated to combine the teachings of the references to provide a single consistent interface for the” slip op. at 22

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “shows the relation between the content being display and the current time, Petitioner shows that a person of ordinary skill in the art would have been motivated to incorporate Vallone’s teachings to improve the interface by making it visually intuitive and interactive. Ex. 1011 ¶¶ 158, 159, 171, 177, 178. Dr. Rhyne’s testimony is credible and persuasively supported by the teachings of the underlying references. See Ex. 1011 ¶¶ 158, 159, 171, 177, 178; Ex. 1002 ¶¶ 6, 7, 88, 142; Ex. 1003, Fig. 26, 1:44–49, 1:53–57, 18:32– 44, 19:1–3, 20:19–22. For example, as stated above, Vallone expressly discloses applying its interactive trick play bar more broadly to any device in which physical position in the material is readily ascertainable, such as a VCR. Ex. 1003, 20:19–22. In addition, Vallone describes the known problem of multimedia devices lacking interactivity and intuitive devices. Ex. 1003, 1:11–49. One of ordinary skill in the art would have been aware of this problem and motivated to improve Wood’s digital VCR accordingly. Ex. 1011 ¶¶ 158, 159, 171, 177, 178. In addition, as Dr. Rhyne explains, an ordinarily skilled artisan would have been motivated to combine the teachings of the references to provide a single consistent interface for the” slip op. at 22

  Patent outcomesUS 8,768,147 mixed
  § 103 obviousnesscites Graham
  Patents in suitUS 8,768,147
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Image Processing Technologies LLCSome claims unpatentable
  PTAB · May 9, 2018 · IPR2017-00336 · APJ Joni Y Chang · IPR · Final written decision

  Claim 22 is unpatentable as obvious over Pirim; claims 1, 18, 19, and 29 were not shown unpatentable on the asserted grounds.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We begin our claim construction analysis with the plain language of the claim. In particular, the plain and ordinary meaning of “an input multiplexer adapted to receive data describing one or more parameters of the event being detected and to output data describing a selected one of the one or more parameters in response to a selection signal” encompasses two alternative structures. Ex. 1001, 29:64−67 (emphases added). The first alternative structure includes a “single parameter” multiplexer. The second alternative structure includes a “multiple parameters” multiplexer. The Specification confirms our understanding of the plain and ordinary meaning of the claim language because the Specification discloses both alternative structures. Id. at 2:51−61; 9:1−6, 11:14−48, 17:55−18:23, 20:58−66, Figs. 3, 4, 12, 13d, 14, 15a, 15b, 17, 25, 31a.” slip op. at 19

  • Skill levelSkill level board ownOther

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are 6 No objective evidence of non-obviousness has been presented in this proceeding. 27 made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). In that regard, we do not observe meaningful differences between the parties’ assessments of a person of ordinary skill in the art at the time of the invention. Pet. 28–29; PO Resp. 13. For instance, both the parties agree that such an artisan would have had a degree in electrical engineering or a related field and experience in the field of image processing. Id. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our analysis in this Decision is supported by either assessment.” slip op. at 27

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when in evidence, objective evidence of non-obviousness.6 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 27

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Having reviewed the parties’ contentions and supporting evidence, we determine that Petitioner has established sufficiently that Pirim discloses an input multiplexer and a selection signal, as recited in claim 22. Patent Owner’s arguments and supporting evidence do not undermine Petitioner’s showing.” slip op. at 33

  Patent outcomesUS 6,959,293 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,959,293
• One World Technologies, Inc. D/B/A Techtronic Industries Power Equipment v. The Chamberlain Group, Inc.Some claims unpatentable
  PTAB · Apr 24, 2018 · IPR2017-00073 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1–3, 10, and 11 are anticipated by Crimmins; claims 4–8, 12, and 13 are obvious over Crimmins and Weik; claim 14 was not shown unpatentable.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “evidence, and we find that Crimmins discloses every limitation of claim 1. Petitioner has proven, by a preponderance of the evidence, that claim 1 is anticipated by Crimmins under 35 U.S.C. § 102(b).” slip op. at 32

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Dec. on Inst. 10–13, 17–19. We also preliminarily interpreted the following limitations as means-plus-function limitations under 35 U.S.C. § 112, sixth paragraph: Limitation Interpretation “apparatus for communicating Functions: communicating the the identities of faults in the identities of faults in the operation of operation of the barrier” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for petitioner

    “In its Response, Patent Owner states that Petitioner’s proposed interpretations “introduce concepts that have no basis in the claim’s plain language.” PO Resp. 3–4. Patent Owner, however, does not offer any alternative interpretations or take a position as to whether any of the limitations identified above are means-plus-function limitations under 35 U.S.C. § 112, sixth paragraph. Instead, Patent Owner argues that the claims should be interpreted according to their “plain language” and that “no construction is necessary for any claim term.” Id. at 4. Petitioner adopts our preliminary interpretations. Reply 3. Upon review of the full record from trial, we do not perceive any reason or evidence that compels any deviation from our earlier interpretations. See Dec. on Inst. 7–19. We adopt the previous analysis and conclude that no other terms require interpretation.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Neither party explains in detail why the respective proposed level of ordinary skill in the art should be adopted nor how the different levels affect the parties’ analyses. The parties’ declarants agree that an ordinarily skilled artisan would have had an undergraduate degree in electrical or computer engineering (or the equivalent) and two years of work experience. The difference between the two is the substance of that work experience. Mr. Lipoff opines that it would be in “the fields of access control or automated door control systems,” whereas Dr. Davis opines that it would be in “embedded computer systems or related technologies involving microcontrollers.” See Ex. 1003 ¶ 29; Ex. 2006 ¶ 18. Mr. Lipoff’s proposed definition is consistent with the technology at issue in this proceeding. The ’611 patent is directed to “barrier movement operators,” such as “[g]ate operators and garage door operators,” and “human interface methods and apparatus for such systems.” Ex. 1001, col. 1, ll. 6–14. The ’611 patent does not mention specifically “embedded” computer systems, but does disclose that barrier movement operators were known to include a “motor” and “controller” that “selectively energiz[es] the motor to move the barrier” and is “responsive to stimulus signals to perform various barrier movements.” Id. at col. 1, ll. 9–19; see also Ex. 1004, col. 1, ll. 9–13 (Crimmins similarly disclosing that it is directed to “a controller for controlling the motor, interface, safety systems and other functions of a commercial door or barrier operator”); Ex. 1007 ¶¶ 2–5 (Weik similarly disclosing that it is directed to “[a]utomated, motor-driven barriers”). Thus, an individual having experience working with barrier movement operators would have been familiar with their constituent parts, including motors and controllers for the devices. Based on the record developed during trial, including our review of the ’611 patent and the types of problems and solutions described in the ’611 patent and cited prior art, we agree with Mr. Lipoff’s assessment of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 14

  Patent outcomesUS 7,196,611 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,196,611

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.