Unified Patents LLC v. Gesture Technology Partners LLC

1. Case Identification

• Case #: IPR2021-00917
• Patent #: 7,933,431
• Filed: May 14, 2021
• Petitioner(s): Unified Patents, LLC
• Patent Owner(s): Gesture Technology Partners, LLC
• Challenged Claims: 7-13

2. Patent Overview

• Title: Handheld computer apparatus with gesture control
• Brief Description: The ’431 patent is directed to using a TV camera and computer for optical sensing of human input to control devices. The invention relates to handheld computer apparatuses that analyze an image of an object, such as a user’s hand or finger, to determine its position or movement and control a function of the apparatus based on that information.

3. Grounds for Unpatentability

Ground 1: Obviousness over Doi in view of Cousins - Claims 7-12 are obvious over Doi in view of Cousins.

• Prior Art Relied Upon: Doi (Patent 6,266,061) and Cousins (Patent 6,417,797).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Doi taught a user interface apparatus that satisfied most limitations of independent claim 7. Doi’s system used an image input unit (e.g., a CCD camera) to capture reflected light from an object like a user’s hand, analyzed the image to determine shape and motion (e.g., finger movement), and used this information to perform control, such as moving a cursor. However, Petitioner asserted that Doi did not explicitly disclose that its computer apparatus was handheld. Cousins was cited to supply this missing element, as it described a "multi-purpose portable imaging device" that is "small enough to be hand-held" and includes a camera.
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine Doi and Cousins for several reasons. First, Cousins explicitly taught using its hand-held device with hand gestures for computer input, which would have motivated a POSITA to consult gesture-based input references like Doi. Second, there was an implicit motivation to apply Doi's gesture-control interface to a smaller, more desirable form factor like the handheld device in Cousins. Finally, the combination represented a simple substitution of one known element (a handheld computer from Cousins) for a more general one (the computer in Doi) to achieve a predictable result.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references, as the integration of gesture recognition technologies into smaller, portable devices was well-known at the time.

Ground 2: Obviousness over Doi, Cousins, and Parulski - Claim 13 is obvious over Doi in view of Cousins, further in view of Parulski.

• Prior Art Relied Upon: Doi (Patent 6,266,061), Cousins (Patent 6,417,797), and Parulski (Patent 5,666,159).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1 to address dependent claim 13, which specified that the handheld apparatus is a cellular phone. The combination of Doi and Cousins provided a handheld computing device with gesture-based input. Petitioner argued that Parulski taught the final necessary element by disclosing an invention where "a cellular telephone is provided with the components of an electronic image camera to form a combined telephone/camera unit."
  • Motivation to Combine: A POSITA would combine Parulski's teachings with the Doi and Cousins combination as a matter of simple substitution. It would have been obvious to implement the gesture-control system on a different, but well-known, type of handheld device (a cellular phone) to gain the benefits of that platform, with predictable results.

Ground 3: Anticipation by Numazaki - Claims 7-9 and 11-12 are anticipated by Numazaki.

• Prior Art Relied Upon: Numazaki (Patent 6,144,366).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Numazaki disclosed every element of the challenged claims. Numazaki taught a "compact portable information device" that is "in a size that can be held by one hand," which constituted the claimed handheld computer apparatus with a housing. The device included a "photo-detection sensor unit" (camera means) to extract reflected light from a target object (e.g., a user’s finger) to obtain an image. It further disclosed a "feature data generation unit" (computer means) within the device to analyze the image, determine "information on a position and a shape of the hand," and use that information to control functions, such as moving a cursor on a display. This mapping was argued to satisfy all limitations of independent claim 7 and dependent claims 8, 9, 11, and 12.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 7, 9, and 11 based on Rhoads (Application # 2005/0013462), which taught using optical interfaces in portable devices like "palmtop computers" to control computer functions based on object movement.

4. Key Claim Construction Positions

• "camera means associated with said housing" (claim 7): Petitioner argued this phrase should not be interpreted to require the camera to be within the housing. It contended that because the claim used the more restrictive term "within" to describe the location of the "computer means," the different term "associated with" must have a broader meaning, such as "connected, joined, or related." This construction would allow the claim to cover embodiments where the camera is external to the handheld device, which Petitioner argued was consistent with the patent’s specification and necessary to avoid reading out a disclosed embodiment. The remaining disputed terms in claim 7 were construed as means-plus-function limitations.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny the petition. It argued against denial under 35 U.S.C. §325(d) because the primary prior art references (Doi, Cousins, Parulski, Numazaki, and Rhoads) were never presented to or considered by the examiner during the original prosecution.
• Petitioner also argued against discretionary denial under Fintiv based on parallel district court litigations. It asserted that the Fintiv factors strongly favored institution because: (1) the parallel cases were in their earliest stages with no trial date set, making it likely a final written decision would issue first; (2) Petitioner was not a party to the litigations; and (3) the petition presented a strong case for unpatentability on the merits.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 7-13 of the ’431 patent as unpatentable.