Apple Inc v. Gesture Technology Partners LLC

1. Case Identification

• Case #: IPR2021-00923
• Patent #: 8,194,924
• Filed: May 26, 2021
• Petitioner(s): Apple Inc.
• Patent Owner(s): Gesture Technology Partners LLC
• Challenged Claims: 1-14

2. Patent Overview

• Title: Method and Apparatus for Light-Based Ranging and 3D Interaction
• Brief Description: The ’924 patent discloses handheld computer devices that use cameras to optically sense human input. The core technology involves a handheld device with a first camera oriented toward the user and a second camera oriented away from the user, with the cameras having non-overlapping fields of view, to perform control functions based on camera outputs.

3. Grounds for Unpatentability

Ground 1: Obviousness over Mann and Numazaki - Claims 1-6, 11, and 14 are obvious over Mann in view of Numazaki.

• Prior Art Relied Upon: Mann (Canadian Published Patent Application CA2,237,939A1) and Numazaki (Patent 6,144,366).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mann taught the core limitations of independent claim 1. Mann disclosed handheld devices, such as a Personal Digital Assistant (PDA) or a wristwatch, containing two cameras with non-overlapping fields of view. In Mann’s embodiments, one camera was oriented to view the user while the second captured a person in front of the user, explicitly for recording both sides of a conversation. Mann further disclosed that its device contained a computer and could be self-contained, and its wristwatch embodiment used touch-based finger strokes on a clock face to control functions like starting or stopping a recording.
  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would have been motivated to replace Mann’s touch-based control system with the non-touch gesture recognition taught by Numazaki. Numazaki disclosed using a camera in a portable device to detect user gestures performed in front of the device. The motivations to combine were threefold: (1) to improve the covert nature of Mann's device, as non-touch gestures are less conspicuous than physically interacting with a PDA or watch; (2) to prevent the user’s finger from obstructing the display during input, a specific problem Numazaki aimed to solve; and (3) to avoid smudging the user-facing camera lens, which in Mann's wristwatch was integrated into the touch-sensitive watch face.
  • Expectation of Success: A POSITA would have had an expectation of success because both Mann and Numazaki described similar hardware (PDAs, wristwatches) with user-facing cameras, making the integration a straightforward replacement of one input method with a known, improved alternative.

Ground 2: Obviousness over Mann, Numazaki, and Amir - Claims 7, 8, 10, 12, and 13 are obvious over Mann in view of Numazaki and Amir.

• Prior Art Relied Upon: Mann (Canadian Application CA2,237,939A1), Numazaki (Patent 6,144,366), and Amir (Patent 6,539,100).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Mann and Numazaki from Ground 1 to further address claims related to determining facial expressions, object position/orientation, and recognizing an object. Petitioner asserted that Amir taught a camera-based system that uses pupil-mapping to determine attributes of a subject, including the position of the face, blinking, and head movements. Amir’s system could also condition image capture on detecting that a subject’s eyes are open to ensure a high-quality photograph.
  • Motivation to Combine: The primary motivation was to improve the quality and utility of images captured by Mann's covert investigative device. Given Mann’s purpose of surreptitious recording, a POSITA would recognize the benefit of ensuring that any captured images clearly depict the subject’s facial features. A POSITA would combine Amir’s pupil-detection technology with the modified Mann device to automatically capture an image only when the subject is facing the camera with their eyes open, thereby determining facial expression and position as required by the claims.
  • Expectation of Success: A POSITA would have anticipated success in this combination, as Amir expressly taught its logic could be integrated into a compact package suitable for portable devices like those in Mann.

Ground 3: Obviousness over Mann, Numazaki, and Aviv - Claims 6 and 9 are obvious over Mann in view of Numazaki and Aviv.

• Prior Art Relied Upon: Mann (Canadian Application CA2,237,939A1), Numazaki (Patent 6,144,366), and Aviv (Patent 5,666,157).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground also built on the base combination from Ground 1, adding the teachings of Aviv to address claims requiring the determination of a gesture performed by a person other than the user. Petitioner argued that Aviv disclosed a camera-based surveillance system that monitored a scene, identified gestures indicative of criminal intent (e.g., a hostile arm movement) by comparing them to stored "signatures," and automatically triggered a high-resolution recording upon detection.
  • Motivation to Combine: The motivation was to improve the usability and effectiveness of Mann’s device for surreptitious monitoring. Rather than requiring the user to manually initiate recording with a gesture (as taught by the Mann/Numazaki combination), a POSITA would have been motivated to incorporate Aviv’s technology to enable automatic recording. This would allow the outward-facing camera of the modified Mann device to constantly monitor a subject and begin capturing video automatically when the subject performs a pre-defined gesture of interest, ensuring that crucial events are not missed.
  • Expectation of Success: Success was expected because Mann’s devices, with their outward-facing cameras, were already well-suited for monitoring subjects, making the integration of Aviv’s gesture-detection and automatic-recording logic a predictable improvement.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors would be inappropriate. The parallel district court litigation was in its earliest stages, with no significant investment by the parties or the court. Petitioner contended that the projected trial date was expected to occur after the statutory deadline for the Board's Final Written Decision (FWD), especially considering frequent trial schedule slippage in the relevant district.

5. Relief Requested

• Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 1-14 of the ’924 patent as unpatentable.