Apple Inc v. Gesture Technology Partners LLC

1. Case Identification

• Case #: IPR2021-00920
• Patent #: 7,933,431
• Filed: May 21, 2021
• Petitioner(s): Apple Inc.
• Patent Owner(s): Gesture Technology Partners LLC
• Challenged Claims: 1-31

2. Patent Overview

• Title: Method and Apparatus for Computer Input
• Brief Description: The ’431 patent describes methods and apparatus for controlling computing devices by optically sensing human input. While the specification discloses various systems, the challenged claims are directed to handheld devices that use at least one camera to process images of a user (e.g., a finger) to control a device function.

3. Grounds for Unpatentability

Ground 1: Obviousness over Numazaki and POSITA Knowledge - Claims 1-4, 7-9, 11-22, 25, 26, and 28 are obvious over Numazaki in view of the knowledge of a POSITA.

• Prior Art Relied Upon: Numazaki (Patent 6,144,366) and the general knowledge of a Person of Ordinary Skill in the Art (POSITA).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Numazaki discloses the core limitations of the challenged claims. Specifically, Numazaki’s eighth embodiment teaches a compact, handheld device that controls an on-screen cursor by using a camera system and a light source to detect the movement of a user's finger in front of a sensor window. Petitioner contended this system meets the limitations of independent claims 1, 7, and 14, which require a handheld device controlled by sensing finger movement.
  • Motivation to Combine (for §103 grounds): For dependent claims reciting features not explicitly in Numazaki's eighth embodiment (e.g., 3D sensing, cellular phone functionality, videoconferencing), Petitioner argued a POSITA would have been motivated to incorporate these features from other disclosed embodiments within Numazaki. For example, Numazaki teaches 3D gesture detection and videoconferencing systems in other embodiments, and a POSITA would combine these known functionalities to improve the usability and feature set of the handheld device, as such combinations were predictable improvements.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because Numazaki provides the necessary components and teachings for a handheld gesture-controlled device, and incorporating additional features from other sections of the same reference would involve applying known techniques.

Ground 2: Obviousness over Numazaki and DeLeeuw - Claims 5-6 and 29 are obvious over Numazaki in view of DeLeeuw.

• Prior Art Relied Upon: Numazaki (Patent 6,144,366) and DeLeeuw (Patent 6,088,018).
• Core Argument for this Ground:
  • Prior Art Mapping: The challenged claims require sensing the movement of one finger relative to another (claim 5) or sensing two fingers to determine a pinching action (claim 29). Petitioner asserted that while Numazaki teaches single-finger gesture control, DeLeeuw explicitly teaches a "video reflection" system that recognizes a "pinch" gesture (involving the index finger and thumb) to simulate a mouse-down event for manipulating on-screen icons.
  • Motivation to Combine (for §103 grounds): A POSITA would combine DeLeeuw's pinch gesture with Numazaki's handheld system to enhance its functionality. Petitioner argued that manipulating icons via gestures was a known problem, and using a pinch gesture was one of a finite number of predictable solutions. Adding this intuitive gesture to Numazaki's device would be a simple and logical improvement.
  • Expectation of Success (for §103 grounds): Success would be expected because Numazaki already provides the hardware (camera, processor) capable of detecting hand gestures, making the modification to recognize a two-finger pinch gesture a straightforward programming task.

Ground 3: Obviousness over Numazaki and DeLuca - Claims 10, 23, 24, and 27 are obvious over Numazaki in view of DeLuca.

• Prior Art Relied Upon: Numazaki (Patent 6,144,366) and DeLuca (Patent 6,064,354).
• Core Argument for this Ground:
  • Prior Art Mapping: These claims relate to a 3D or stereoscopic display and controlling a game. Petitioner argued that DeLuca discloses a system that stereoscopically projects a 3D interface into a physical space, allowing a user to interact with virtual objects (including for a game application) by moving their finger to "touch" the projected icons.
  • Motivation to Combine (for §103 grounds): Although Numazaki teaches 3D gesture sensing, it does not teach projecting the user interface into that 3D space. A POSITA would combine DeLuca's 3D display with Numazaki's gesture-controlled handheld device to create a more immersive and intuitive user experience, which was a known goal in the field of human-computer interaction.
  • Expectation of Success (for §103 grounds): A POSITA would expect success because both references provided compatible technologies for 3D interaction, and integrating a known 3D display method with a known 3D gesture input system was a predictable combination.

Ground 4: Obviousness over Numazaki and Peters - Claims 30 and 31 are obvious over Numazaki in view of Peters.

• Prior Art Relied Upon: Numazaki (Patent 6,144,366) and Peters (Patent 6,243,683).
• Core Argument for this Ground:
  • Prior Art Mapping: Claims 30 and 31 require sensing a user's expression and providing an aid to speech recognition. Petitioner argued Peters teaches a camera-based system that activates speech recognition by detecting user gestures, such as looking directly at the camera (an "expression") or pointing at it.
  • Motivation to Combine (for §103 grounds): Petitioner pointed to an express statement in Numazaki that its gesture technology should serve "as a complement to...speech input." This statement provided a direct motivation for a POSITA to combine Numazaki’s gesture control system with a speech recognition system like that taught by Peters, where gestures are used to activate or aid the speech input.
  • Expectation of Success (for §103 grounds): Success would be expected given Numazaki’s express suggestion for the combination and the fact that Numazaki’s device already included the camera and processing capabilities needed to implement the gesture detection taught by Peters.

4. Key Claim Construction Positions

• Petitioner argued that several "means-plus-function" limitations under 35 U.S.C. §112(f) were central to its analysis.
  • "camera means" (Claim 7): Petitioner contended this term did not invoke §112(f) because "camera" itself connotes sufficient structure (i.e., optical image sensors) to a POSITA.
  • "computer means" and "means for controlling" (Claim 7): Conversely, Petitioner argued these terms do invoke §112(f) as they are purely functional. The corresponding structure was identified in the ’431 patent’s specification as a computer or processor programmed to perform specific algorithms for identifying features on an object and tracking their movement to control a device function.
  • "means for transmitting" (Claim 11): Petitioner argued this invoked §112(f), with the corresponding structure being a cellular transceiver as disclosed in the specification.

5. Arguments Regarding Discretionary Denial

• Petitioner argued extensively that the Board should not exercise its discretion to deny institution under either the General Plastics or Fintiv frameworks.
• General Plastics Factors: Petitioner asserted that although another IPR petition had been filed by a different party (Unified Patents) against some of the same claims, this petition challenges a significantly larger set of claims (31 vs. 7) and relies on different prior art combinations and legal theories. Therefore, it contended that this petition was not an abusive, follow-on challenge.
• Fintiv Factors: Petitioner argued that the parallel district court litigation was in its earliest stages, with no significant investment by the court or parties. It stated its intent to file a motion to stay the litigation if the IPR is instituted and argued that the projected trial date is well after the statutory deadline for a Final Written Decision (FWD) and is likely to be delayed further, minimizing any potential inefficiency.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-31 of the ’431 patent as unpatentable.