LG Electronics Inc v. Gesture Technology Partners LLC

1. Case Identification

• Case #: IPR2021-01255
• Patent #: 7,804,530
• Filed: July 15, 2021
• Petitioner(s): LG Electronics, Inc. and LG Electronics U.S.A., Inc
• Patent Owner(s): Gesture Technology Partners, LLC
• Challenged Claims: 1-23

2. Patent Overview

• Title: Picture Taking Method and Apparatus
• Brief Description: The ’530 patent discloses a method for automatically photographing a person. The system uses a camera and computer to acquire and process an image, determine if the person's state matches a predetermined "desired state" (such as a specific pose or gesture), and records the image as a photograph if a match is found.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kumar, Nguyen, and Kojima - Claims 1, 6-9, 13-19, 21, and 23 are obvious over Kumar in view of Nguyen and Kojima.

• Prior Art Relied Upon: Kumar (Patent 6,514,083), Nguyen (Patent 6,072,494), and Kojima (Japanese Unexamined Patent Application Publication H10-23319).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kumar disclosed the core system of claim 1: a camera, computer, and image processing software used in an interactive karaoke environment to capture and process images of performers. Kumar further taught analyzing gestures. However, Kumar did not detail the gesture analysis or explicitly teach automatically recording a photograph upon gesture recognition. Petitioner asserted that Nguyen, which Kumar expressly incorporated by reference for its "preferred gesture analysis process," supplied the missing details. Nguyen taught a complete gesture recognition system, including determining a person’s state (a gesture) and comparing it to a "desired state" (a known gesture). To supply the final element, Petitioner argued Kojima taught a system that automatically records a still image responsive to a recognized event (e.g., a hand gesture), thereby obviating the conscious act of releasing a shutter.
  • Motivation to Combine: A POSITA would combine Kumar and Nguyen because Kumar explicitly incorporated Nguyen by reference, creating an express suggestion to use Nguyen’s gesture recognition methods. A POSITA would then be motivated to add Kojima’s teachings to the Kumar/Nguyen system to solve the known problem of needing to manually trigger a photograph during an activity like a karaoke performance. Kojima provided a known solution—automatic image capture upon event detection—to improve the functionality of the base system.
  • Expectation of Success: Petitioner argued a POSITA would have a high expectation of success because Kumar stated its method operated according to Nguyen's techniques. Adding Kojima’s function was presented as a straightforward application of a known technique (automated capture) to a known system to achieve a predictable result.

Ground 2: Obviousness over Kumar, Nguyen, Kojima, and Mihara - Claims 2-4 are obvious over Kumar in view of Nguyen, Kojima, and Mihara.

• Prior Art Relied Upon: Kumar (Patent 6,514,083), Nguyen (Patent 6,072,494), Kojima (Japanese Unexamined Patent Application Publication H10-23319), and Mihara (Patent 6,504,944).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the combination in Ground 1 to address dependent claims 2-4, which specified the "desired state" is a pre-determined expression, such as a smile or having eyes open. Petitioner argued that the primary combination taught gesture recognition, and Mihara taught an image recognition apparatus specifically for recognizing facial expressions with high accuracy, including a "smile" or "surprise (widely opening eyes)." Mihara thus provided the specific teachings required by these claims.
  • Motivation to Combine: A POSITA would combine Mihara with the primary references to improve the quality of the captured photographs. Petitioner asserted it was well-known and desirable to capture photos when subjects are smiling with their eyes open. Mihara provided a known, advanced technique for detecting such expressions, which a POSITA would have been motivated to incorporate to produce more satisfactory images and avoid the need for retakes.
  • Expectation of Success: Success was reasonably expected because Mihara’s technique pertained to capturing and analyzing images to detect features, which was directly applicable to the base system's function. Incorporating this known technique for facial expression recognition was argued to be a predictable improvement.

• Additional Grounds: Petitioner asserted additional obviousness challenges for various dependent claims by adding Amir (for detecting open eyes), Flickner (for detecting eye gaze direction), Nonaka (for confirming the subject is sufficiently still), Doi (for providing on-screen user instructions), and Katayama (for displaying an image of a desired state to teach the user) to the core Kumar/Nguyen/Kojima combination.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution. Under 35 U.S.C. §325(d), denial was argued to be inappropriate because none of the asserted prior art references were presented to or considered by the Examiner during the original prosecution.
• Regarding discretionary denial under 35 U.S.C. §314(a) and the Fintiv factors, Petitioner contended that the parallel district court litigation was in its earliest stages, with the complaint having been filed only a few months prior and no trial schedule set. Therefore, the Board’s Final Written Decision would likely issue well before any potential trial. Petitioner also asserted that the merits of the petition were exceptionally strong, which weighs heavily in favor of institution.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-23 of the ’530 patent as unpatentable.