Microsoft Corporationv.Ip-Learn Focus LLC

Patent Trial and Appeal Board

Apr 11, 2016

13481821 (P.T.A.B. Apr. 11, 2016)

Trials@uspto.gov Paper No. 33
571-272-7822 Entered: April 11, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Microsoft CORPORATION,
Petitioner,

v.

IpLearn-Focus, LLC,
Patent Owner.
____________

Case IPR2015-00095
Patent 8,475,174 B2
____________

Before MICHAEL W. KIM, RICHARD E. RICE, and
JEREMY M. PLENZLER, Administrative Patent Judges.

RICE, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
A. Summary
Microsoft Corporation (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
requesting an inter partes review of claims 1, 2, 16–18, 22, 37–42, 48, 55,
and 56 of U.S. Patent No. 8,475,174 B2 (Ex. 1001, “the ’174 Patent”). We
instituted a trial as to only claims 1, 2, 18, 22, 37–42, 48, 55, and 56.
Paper 12 (“Inst. Dec.”), 30.1 After institution, IpLearn-Focus, LLC (“Patent
Owner”) filed a Patent Owner Response (Paper 19, “PO Resp.”), to which
Petitioner filed a Reply (Paper 23, “Pet. Reply”).
The parties relied at trial on the following references, declarations,
and deposition testimony:

Reference Patent No./Title Date Exhibit
Black US 5,774,591
June 30, 1998
(filed Dec.
15, 1995)
Ex. 1005
Garwin EP 0 055 338 A1 July 7, 1982 Ex. 1006
Hutchinson
Thomas E. Hutchinson et al.,
Human–Computer Interaction
Using Eye-Gaze Input,
19:6 IEEE TRANSACTIONS ON
SYSTEMS, MAN, AND
CYBERNETICS 1527
(Nov./Dec. 1989)
Nov./Dec.
1989 Ex. 1004
Declaration of David Forsyth Ex. 1003
Declaration of David Crane Ex. 2009

1 Patent Owner filed a disclaimer under 37 C.F.R. § 1.321(a) of challenged
claims 16 and 17 of the ’174 Patent. See Ex. 2006.
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Transcript of Deposition of David Crane Ex. 1030
Transcript of Deposition of David Forsyth Ex. 2010

The grounds for trial were as follows:

References Basis Claims Challenged
Hutchinson § 102(b) 1, 37, 38, 40–42, 48, 55, and 56
Hutchinson § 103(a) 1, 2, 37, 38, 40–42, 48, 55, and 56
Black § 102(b) 1, 2, 18, and 22
Black and Garwin § 103(a) 37 and 39

An oral hearing was held on December 17, 2015. The transcript of
the oral hearing has been entered into the record. Paper 32 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). The evidentiary
standard is a preponderance of the evidence. See 35 U.S.C. § 316(e);
37 C.F.R. § 42.1(d). This Final Written Decision is issued pursuant to
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons explained below, we determine that Petitioner has
shown by a preponderance of the evidence that claims 1, 2, 18, 22, 37, and
39, but not claims 38, 40–42, 48, 55, and 56, are unpatentable.

B. Related Proceedings
Petitioner and Patent Owner are parties in a federal district court case
involving the ’174 Patent (IpLearn-Focus, LLC v. Microsoft Corp.,
No. 3:14-cv-00151-JD (N.D. Cal.)). Pet. 2; Paper 5, 1. They also are parties
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in an inter partes review involving a patent (U.S. Patent No. 8,538,321 B2,
“the ’321 Patent”) that is related to the ’174 Patent. Paper 5, 1–2; see
IPR2015-00097, Paper 11.

C. The ’174 Patent
The ’174 Patent relates to a computer learning system including a
detached sensor to monitor a student’s behavior. Ex. 1001, 1:18–20, 1:61–
2:14. In one embodiment, the system includes a presenter, a non-intrusive
sensor, a controller, and an indicator. Id. at 2:4–5. In this embodiment, the
presenter presents study materials to a student, the sensor automatically
senses the student’s concentration-sensitive behavior, the controller analyzes
the behavior based on one or more rules, and the indicator indicates the
student’s concentration level based on the analysis. Id. at 2:4–2:13. The
Specification states that a student’s loss of concentration can be measured,
for example, using images of the student’s face. Id. at 8:47–9:40. Upon
determining a loss of concentration, the system can react, for example, by
changing the study materials. Id. at 11:54–62.
The Specification describes calibrating a student’s “concentration-
sensitive behavior.” Id. at 2:54–56. “One type of calibration establishes the
student’s behavior when the student is paying attention, and compares it
with the student’s behavior when the student is working on the study
materials.” Id. at 2:57–60.
In an embodiment, sensor 110 includes digital camera 180, which is
positioned adjacent to monitor 178 such that it can take pictures of the
student’s face while the student is looking at the monitor. Id. at 8:47–55.
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“To improve the performance of this embodiment, before the step of
monitoring, the present invention includes the step of calibration through
imaging.” Id. at 8:59–61. The Specification describes, as an example,
asking the student to look at a message box displayed on the monitor so that
the digital camera can take a reference image of the student’s face. Id.
at 8:64–9:2. After calibration, digital camera 180 regularly captures the
student’s facial image. Id. at 9:22–24. According to the Specification, a rule
for use with this embodiment is: “If the student’s facial orientation is
significantly different from its reference image as shown in two consecutive
monitoring processes, the student has lost concentration in the study
materials.” Id. at 9:37–40.
In another embodiment, study materials are presented in a “multi-
windows environment,” with the student entering inputs into the system
using, for example, a mouse or a keyboard. Id. at 8:20–23. A rule for use
with this embodiment is that: “If for a predetermined period of time, the
inputs have been entered outside the window where the study materials
reside, the student has lost concentration in the study materials.” Id. at 8:32–
34.

D. Illustrative Claims
Claims 1, 16, 22, and 37 are independent. Claim 2 depends from
claim 1; claim 18 depends from claim 16; and claims 38–42, 48, 55, and 56
depend from claim 37. Claims 1 and 37 are illustrative and are reproduced
below:
1. A computer-implemented method for a
user using at least a first window of a display, with
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at least some of the space outside of the first
window being viewable via the display, with the
space outside of the first window including at least
a part of another window at least partially viewable
via the display, the method comprising:
acquiring data, by a computing device,
regarding a volitional input of the user, the data
from a sensor sensing a physical attribute associated
with the user, the sensor being configured to be
detached from the physical attribute associated with
the user to sense at least the physical attribute;
analyzing the data by the computing device,
which is coupled to the sensor and the display;
determining by the computing device from
the analyzing of the data whether the volitional
input suggests the user paying attention to materials
in the first window or not to materials in the first
window, whereby the volitional input suggesting
the user not paying attention to materials in the first
window indicates a change in situation from the
volitional input suggesting the user paying attention
to materials in the first window; and
adjusting, by the computing device, materials
for presenting to the user if the determining
determines that the volitional input suggests the
user not paying attention to materials in the first
window,
wherein the sensor includes an imaging
sensor.
Ex. 1001, 13:52–14:11.
37. A computing system for a user using a
display that is configured to display a first window,
with at least some of the space outside of the first
window being viewable via the display, and with
the space outside of the first window including at
least a part of another window at least partially
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viewable via the display, the computing system
comprising:
a sensor configured to:
sense, in a session, an area of the user
to produce a first piece of data regarding a
volitional behavior of the user, the first piece
of data being electronically linked to an
identity of the user, with the sensor being
configured to be detached from the area of the
user to sense the area; and
sense, in another session, an area of the
user to produce a second piece of data
regarding another volitional behavior of the
user, with the sensor being configured to be
detached from the area of the user to sense the
area; and
a processor coupled to the sensor and the
display, the processor configured to compare at
least the first piece of data with the second piece of
data to help identify materials for presenting to the
user via the display,
wherein the sensor includes a camera, and
wherein the first piece of data includes an
image of the user.
Id. at 19:7–30.

II. ANALYSIS
A. Claim Construction; Level of Skill in the Art
In an inter partes review, the Board gives claim terms in an unexpired
patent their broadest reasonable interpretation in light of the specification of
the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re
Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278, 1279 (Fed. Cir. 2015)
(“We conclude that Congress implicitly approved the broadest reasonable
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interpretation standard in enacting the AIA” and “the standard was properly
adopted by PTO regulation.”), cert. granted sub nom. Cuozzo Speed Techs.
LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). Under that standard, a claim
term generally is given its ordinary and customary meaning, as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). While our claim interpretation cannot be divorced from the
specification and the record evidence, see Microsoft Corp. v. Proxyconn,
Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (quoting In re NTP, Inc., 654
F.3d 1279, 1288 (Fed. Cir. 2011)), we must be careful not to import
limitations from the specification that are not part of the claim language.
See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed.
Cir. 2004). Any special definition for a claim term must be set forth in the
specification with reasonable clarity, deliberateness, and precision. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
The parties propose different definitions of a person of ordinary skill
in the art (“POSITA”). According to Petitioner’s expert, Dr. David Forsyth,
a POSITA
would have had a combination of experience and education in
computer vision and the design of human-computer interfaces.
This typically would consist of a minimum of a bachelor of
science in Computer Science or Electrical Engineering (or a
related engineering field) plus either a year of graduate training
or 2-4 years of relevant experience. The POSITA also would
have been familiar with the design of, theory behind, principles
of operation of, intended use of, and the underlying technology
used in computer vision and human-computer interfaces.
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Ex. 1003 ¶ 27. In contrast, Patent Owner’s expert, Mr. David Crane,
testifies that a POSITA “would have had a bachelor’s degree or equivalent
in the field of computer engineering, computer science or electrical
engineering and at least two to three years of experience relating to human-
machine interface design.” Ex. 2009 ¶ 15.
Based on the competing arguments and evidence of record, we largely
accept Patent Owner’s proposed definition. The definition proposed by
Petitioner appears to be overly narrow because of its focus on “computer
vision.” We have made minor modifications to Patent Owner’s definition to
clarify the educational requirement, and to broaden the experience
requirement to include at least a year of graduate training as an alternative to
work experience, consistent with the background of researchers in the field
as indicated by prior art references such as Hutchinson. See Ex. 1004,
1533–1534. We determine that a POSITA would have had at least a
bachelor’s degree in computer engineering, computer science, electrical
engineering, or an equivalent field, and at least a year of graduate training,
or two years of work experience, relating to human-machine interfaces.

1. “window”
The preamble of claim 1 recites:
[a] computer-implemented method for a user using at least a first
window of a display, with at least some of the space outside of
the first window being viewable via the display, with the space
outside of the first window including at least a part of another
window at least partially viewable via the display
(emphasis added). The preamble of claim 37 similarly recites:
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[a] computing system for a user using a display that is configured
to display a first window, with at least some of the space outside
of the first window being viewable via the display, and with the
space outside of the first window including at least a part of
another window at least partially viewable via the display
(emphasis added). In the Institution Decision, we determined that the
broadest reasonable interpretation consistent with the Specification of the
term “window” is a bounded sub-region of a computer display that is
capable of displaying a distinctly different type of information than one or
more other sub-regions of the computer display. Inst. Dec. 8 (citing
Ex. 1001, 8:20–42). Neither of the parties proposes any change to that
interpretation, and our review of the evidence does not indicate that any
change is necessary. Consequently, we maintain our previous interpretation.

2. “a speed of the user”
Claim 22 requires an imaging sensor that produces “data regarding
volitional behaviors of the user at different times” and a controller that uses
“a rule regarding a speed of the user to analyze the volitional behaviors of
the user to help determine what to present to the user” (emphasis added). In
the Petition, Petitioner proposed to construe the term “speed” as “velocity or
rate; rate of change of position or angle with respect to time.” Pet. 9. In the
Patent Owner Response, Patent Owner did not propose a construction for
“speed” or “speed of the user.”
The ordinary meaning of “speed” is “rate of performance or action.”
See MERRIAM WEBSTER’S COLLEGIATE DICTIONARY 1129 (10th ed. 1993)
(Ex. 3001). The Specification uses the term “speed” in accordance with its
ordinary meaning. See, e.g., Ex. 1001, 7:30–31 (“In one embodiment, the
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sensor 110 monitors the speed of inputs by the student as a function of time.
There are different ways to monitor the speed of inputs, such as polling
periodically the corresponding devices of those inputs.”), 7:36–41 (“As the
student starts working on the study materials, the inputs are entered at a
certain speed. As the student gets tired, or as the student loses concentration,
this speed typically decreases.”), 8:4–7 (“If the speed of the student’s
volitional inputs across a predetermined period of time is significantly lower
than the reference speed, the student has lost concentration in the study
materials.”), 10:23–27 (“[I]f the student’s eyes are wide open with his inputs
through the mouse moving down the study materials in a fairly constant
speed for a long duration of time, such as five minutes, the student’s
concentration level is also high.”).
We determine that that the broadest reasonable interpretation
consistent with the Specification of the term “a speed of the user” is “a rate
of performance or action of the user.”

3. “session”
Claim 37 recites “a sensor configured to: sense, in a session, an area
of the user to produce a first piece of data regarding a volitional behavior of
the user, the first piece of data being electronically linked to an identity of
the user”; and “sense, in another session, an area of the user to produce a
second piece of data regarding another volitional behavior of the user”
(emphasis added).
Petitioner proposes to construe the term “session” based on an
ordinary dictionary as “a period or term devoted to a particular activity.”
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Pet. 10; Pet. Reply 1–2. Petitioner asserts that the term “is used only twice
in the specification: once for a ‘class session,’ and separately, for a ‘working
session.’” Id. at 2 (citing Ex. 1001, 4:5–8; 10:64–67) (emphasis supplied by
Petitioner). Petitioner argues that “[t]he applicants used the term without a
qualifier in the claims, which means those claims are not limited to any
particular kind of session.” Id.
Patent Owner criticizes Petitioner’s dictionary definition as overly
broad, and asserts, based on Mr. Crane’s declaration testimony, that: “‘In
computing systems, a session begins when a user boots up an application
and ends when he or she closes that application, for example, switching
permanently to another application or shutting down the computer.’”
PO Resp. 10–11 (quoting Ex. 2009 ¶ 30). Patent Owner further asserts,
based on Mr. Crane’s testimony:
“‘A software application session is made up of many processes
and routines, including loading, title, calibration, menu, and main
application, among others. It would be contrary to the plain and
ordinary meaning of the term “session” to describe any of these
processes or routines as separate sessions.’”
Id. at 11 (quoting Ex. 2009 ¶ 46).2
The Specification uses the term “session” in two different ways. In
referring to a “class session,” the Specification uses the term “session” as a
continuous period of time devoted to a particular activity. Ex. 1001, 4:5–8
(“The teaching period may last one semester or a year, or just one class
session.”). In referring to a student’s “working session” at the computer,

2 Patent Owner erroneously cites paragraph 30 of Mr. Crane’s Declaration in
the Patent Owner Response.
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however, the Specification uses the term “session” as the period of time
between booting up and closing an application, as discussed further below.
See Ex. 1001, 10:58–11:3.
In the “working session” embodiment, system 100 asks for the
student’s identity “when the student starts working on the study materials,”
and the user’s identity is stored in the system. Id. at 10:58–61. “The
student’s reference information, whether static or dynamic, is stored with the
student’s identity in the memory of the system 100.” Id. at 10:61–63.
“After the first working session, if the student wants to work on study
materials through the system 100 again,” i.e., at the start of the second or
next working session, the system retrieves from its memory the student’s
reference information Id. at 10:64–67. In this embodiment, “the retrieved
reference information can replace the step of calibration.” Id. at 10:67–11:1.
Petitioner’s proposed construction of “session” is not consistent with
the embodiment just discussed. Specifically, under Petitioner’s proposed
construction, there would be no reason to retrieve the user’s reference
information between consecutive sessions. For example, if the student were
to engage in two working sessions performed consecutively, the first session
being devoted to work involving a first set of materials and the second
session being devoted to work involving a second set of materials, there
would be no apparent reason to retrieve the user’s reference information
from memory at the start of the second working session.
In contrast, Patent Owner’s proposed construction is fully consistent
with the “working session” embodiment. The “first working session” would
encompass the entire period of time from “when the user starts working on
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the study materials” (i.e., on booting-up the application) to “[a]fter the first
working session” (i.e., on closing the application). By retrieving the user’s
reference materials from memory at the start of the second or next working
session (i.e., on booting-up the application again), the step of calibration can
be avoided.
Contrary to Petitioner’s argument, the qualifier “working” in
“working session” does not indicate that the term “session” has the broad
meaning asserted by Petitioner. See Pet. Reply 2. The qualifier indicates
only that the term “session” is broader than the term “working session.”
We determine that the broadest reasonable interpretation consistent
with the Specification of the term “session,” as recited in claim 37, is the
period of time between booting up and closing an application on the
computer, for example, by switching permanently to another application or
shutting down the computer.

4. “waiting for a period of time before adjusting”
Claim 1 recites a computer-implemented method including steps of
“determining” and “adjusting.” The “adjusting” step requires “adjusting . . .
if the determining determines that the volitional input suggests the user not
paying attention to materials in the first window.” Claim 2 recites “[a]
computer-implemented method as recited in claim 1, further comprising
waiting for a period of time before adjusting” (emphasis added).
Patent Owner contends that “[c]laim 2 logically requires that the
‘waiting before adjusting step’ occur after the determining step reaches a
determination.” PO Resp. 15. According to Patent Owner, “[t]his is
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because the recited ‘adjusting’ and ‘waiting before adjusting’ are only
performed ‘if the determining determines that the volitional input suggests
the user not paying attention to materials in the first window.’” Id. Patent
Owner further contends: “There would be no ‘adjusting’ or ‘waiting before
adjusting’ if the determining does not make this particular determination.”
Id.
Petitioner argues that Patent Owner’s contention is inconsistent with
the Specification, which describes an embodiment in which “waiting for a
period of time” begins prior to “determining,” and “determining” depends on
the completion of “waiting.” Pet. Reply 3 (citing Ex. 1001, 2:29–36). In the
cited embodiment, the controller determines behavior based on the rule that
“if the student is not looking at the monitor showing the study materials for a
predetermined period of time, the student has lost concentration in the study
materials.” Ex. 1001, 2:29–32. We agree with Petitioner that “waiting for a
period of time” is a part of the “determining” step in that embodiment. See
also id. at 2:23–29, 8:20–46 (describing other embodiments in which
“waiting” is a part of “determining”). As described in the Specification,
changing the study materials (“adjusting”) is a potential reaction of the
system depending on the behavior “determined” after “waiting” for the
predetermined period of time. Id. at 34–37.
Patent Owner has not persuaded us that the “determining” step must
be performed before the “waiting” step. See Altiris, Inc. v. Symantec Corp.,
318 F.3d 1363, 1370 (Fed. Cir. 2003) (holding that “nothing in the intrinsic
evidence indicates that the ‘setting’ step must be performed before the
‘booting normally’ step”); Baldwin Graphic Sys. Inc. v Siebert Inc.,
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512 F.3d 1338, 1345 (Fed. Cir. 2008) (“[A]lthough a method claim
necessarily recites the steps of the method in a particular order, as a general
rule the claim is not limited to performance of the steps in the order recited,
unless the claim explicitly or implicitly requires a specific order.”) (citing
Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342–43
(Fed.Cir.2001)). We determine that Patent Owner’s asserted claim
construction is overly narrow, because claim 2 does not recite waiting for a
period of time after determining and before adjusting; claim 2 simply recites
“waiting for a period of time before adjusting.”
Alternatively, Patent Owner argues that “even if, arguendo, the
‘determining step’ did not have to precede the ‘waiting before adjusting’
step, these steps are still distinct steps” and, “[t]herefore, the ‘waiting before
adjusting’ step cannot be the same step as ‘determining.’” PO Resp. 15.
Patent Owner has not persuaded us that the required “waiting for a period of
time” cannot be a part of, or included in, the “determining” step, as
discussed above. Further, contrary to Patent Owner’s argument, the step of
“waiting for a period of time before adjusting” can overlap, or coincide with,
the “determining” step, without being “the same step as ‘determining.’” See
id. In the embodiment cited by Petitioner, for example, the step of “waiting
for a period of time before adjusting” overlaps, or coincides with, the
predetermined period of time during which the controller determines that the
student is not looking at the monitor showing the study materials. Ex. 1001,
2:29–37.
We determine, under the broadest reasonable interpretation standard,
that claim 2 encompasses the “waiting for a period of time” as part of the
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“determining” step, and that the step of “waiting for a period of time before
adjusting” can overlap, or coincide with, the “determining” step.

5. “the determining determines that the volitional
input suggests the user not paying attention
to materials in the first window”
Claim 1 recites “adjusting, by the computing device, materials for
presenting to the user if the determining determines that the volitional input
suggests the user not paying attention to materials in the first window”
(emphasis added). Neither party proposes an express construction for
“determining . . . the user not paying attention to materials in the first
window.” Patent Owner asserts an implicit construction, however, in its
arguments relating to Black,3 as discussed below. PO Resp. 53–55.
Patent Owner argues that Black’s system “at most takes actions based
on where the user is looking and where the user is paying attention.” Id.
at 54. Implicit in Patent Owner’s argument is that “determining . . . the user
not paying attention to materials in the first window” requires the computing
device, itself, to determine whether the user is not paying attention to
materials in the first window. Petitioner argues, in reply, that taking actions
based on where the user is looking and paying attention “necessarily
‘suggests the user not paying attention to materials in the first window’ as
required by the claim, since his or her attention is directed elsewhere.”
Pet. Reply 13.

3 Black discloses a facial expression and gesture recognition system.
Ex. 1005, 6:66–67.
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Patent Owner’s implicit claim construction is consistent with the
Specification, which describes a computing device that determines, itself,
whether the user is not paying attention to study materials displayed on a
monitor. For example, one embodiment determines whether the user is not
paying attention to study materials (i.e., has lost concentration) by
comparing images of a student’s facial orientation to a reference image
indicative of the user’s facial orientation when paying attention (i.e., looking
at the monitor). See Ex. 1001, 9:18–9:40.
We determine that the broadest reasonable interpretation consistent
with the Specification of “determining . . . the user not paying attention to
materials in the first window” requires the computing device, itself, to
determine whether the user is not paying attention to materials in the first
window.

B. Asserted Anticipation of Claims 1, 37, 38,
40–42, 48, 55, and 56 by Hutchinson
To anticipate a patent claim under 35 U.S.C. § 102, “a single prior art
reference must expressly or inherently disclose each claim limitation.”
Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008).
Under the principles of inherency, if the prior art necessarily functions in
accordance with, or includes, the claimed limitations, it anticipates, even
though artisans of ordinary skill may not have recognized the inherent
characteristics or functioning of the prior art. MEHL/Biophile Int’l Corp. v.
Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (citation omitted); In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1349–50 (Fed. Cir. 2002).
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Petitioner challenges claims 1, 37, 38, 40–42, 48, 55, and 56 as
anticipated by Hutchinson. Pet. 11–19, 29–41. As discussed below, we are
persuaded that Hutchinson anticipates claim 1, but not claims 37, 38, 40–42,
48, 55, and 56.

1. Overview of Hutchinson
Hutchinson discloses a computer system that determines whether a
user’s attention is directed to a particular menu box in order to select that
box from multiple menu boxes presented by a display. E.g., Ex. 1004,
1527–1530. Figure 3(b) of Hutchinson is reproduced below.

Figure 3(b) is a schematic that depicts a device called the eye-gaze-
response interface computer aid (“Erica”), and shows how eye gaze
operates. Id. at 1527, 1529. A principal goal of Erica is to help the
physically and vocally disabled, including quadriplegics. Id. at 1527.
Hutchinson discloses that staring at one of the commands, or menu
options, displayed on the computer screen for a period of time triggers the
system. Id. at 1529, 1530. Hutchinson further discloses that “[w]hen the
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user’s eye-gaze is fixed for this period, a tone sounds and an icon (cursor)
appears in the menu box in line with the gaze.” Id. at 1530. If the user
continues to stare at the command or menu option after the tone sounds and
the icon appears, a second tone sounds and the selected command or option
is performed. Id. Hutchinson discloses that “[t]he purpose of the auditory
and visual feedback is to allow the user a moment to change or abort the
enabled option by altering his or her gaze accordingly.” Id. (emphasis
added).
Using a tree-structured menu hierarchy, the user may select from four
application areas―environmental control and non-vocal communication of
personal needs; communications, including word processing; recreation,
including computer games; and text reading. Id. at 1530.
In the environmental control application, a menu option labeled “call
the nurse” activates a loud buzzer. Id. at 1531. Other options allow the user
to communicate thirst, pain, etc. and to specify, for example, the body region
associated with the pain. Id.
In the reading application, the root menu provides a subject index of
stored text files. Id. Selecting a subject category brings-up a list of the file
names. Id. When a file is selected for reading, only the bottom row of menu
boxes is enabled. Id. Two boxes are used to turn pages, backwards and
forwards, and the third to call-up a submenu. Id. “Options of the submenu
allow the user to place a bookmark on the current page, select an alternate
text, and exit the application.” Id.

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2. Analysis
a. Claim 1
Upon review of the competing arguments and evidence presented by
the parties, we determine that Petitioner has shown by a preponderance of
the evidence that Hutchinson anticipates claim 1. See Pet. 14–15, 29–32;
Pet. Reply 3–6; Ex. 1003 ¶¶ 46–51. As set forth in Petitioner’s claim chart,
Hutchinson discloses each limitation of claim 1, including the “acquiring,”
“analyzing,” “determining,” and “adjusting” steps. See Pet. 29–32.
For example, the “adjusting” step requires “adjusting, by the
computing device, materials for presenting to the user if the determining
determines that the volitional input suggests the user not paying attention to
materials in the first window.” Corresponding to that step, Hutchinson
discloses that, after the user gazes for a period of time at a menu option in a
display window, a tone sounds and an icon (cursor) appears in the display
window in line with the gaze, but the enabled option is aborted if the user
does not continue to gaze at the menu option for an additional period of
time. Ex. 1004, 1530; see Pet. 31–32; Pet. Reply 3–6; Ex. 1003 ¶¶ 49–50.
The abort mechanism of Hutchinson’s computing device discloses the
“adjusting” step by aborting the enabled option (“adjusting . . . materials for
presenting to the user”) if the computing device determines, itself, that the
user is not directing his or her gaze at the menu option in the window (“if the
determining determines that the volitional input suggests the user not paying
attention to materials in the first window”). See Ex. 1004, 1530; supra
Section II.A.5.
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Patent Owner’s opposing arguments with respect to claim 1 are not
persuasive. PO Resp. 23–28. Patent Owner argues that the Petition does not
demonstrate that Hutchinson discloses Claim 1, at least because the Petition
fails to show that Hutchinson expressly or inherently discloses
‘determin[ing] that the volitional input suggests the user not paying attention
to materials in the first window.” Id. at 24. Patent Owner further argues that
“[c]omputers can only identify that which they are programmed to identify,”
id. (citing Ex. 2008, 68:13–16), and Hutchinson’s computer “is not
programmed to determine whether the user is or is not paying attention,” id.
at 25 (citing Ex. 2008, 61:19–62:1). Patent Owner also asserts that, “[i]n
Hutchinson, a user’s eye gaze is not necessarily a proxy for attention and
does not necessarily identify whether the user is not paying attention to
materials in the first window.” Id. Patent Owner explains:
This is because in the context of Hutchinson, the user uses his or
her eye gaze to control the computer. The user may type, make
selections, and/or turn the pages of a book, all solely through the
movement of his or her eyes. Thus, the user of Hutchinson may
need to look away from a “window” the user is paying attention
to so as to perform a command. In this context, where the user’s
eye functions like a remote control, a mouse or a keyboard, the
user’s eye gaze does not necessarily correspond to what he or she
is or is not paying attention to.
Id. at 25–26.
The above arguments of Patent Owner do not address Hutchinson’s
abort mechanism. Contrary to Patent Owner’s arguments, we find that the
abort mechanism is programmed to determine whether the user is or is not
paying attention to materials in the first window, for the reasons discussed
above.
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Patent Owner also argues that: “[c]hoosing to make or abort a
selection does not determine whether the user is paying attention to the
selected item”; “[a]borting, for example, a ‘next page’ command by
directing the user’s eye gaze away from the box does not indicate the user is
not paying attention to that box”; and “[w]illful choices to abort a
provisionally selected menu box does not evidence ‘not paying attention’ to
the ‘next page’ button.” Id. at 28. These arguments also are unpersuasive.
Hutchinson’s computing device, when implementing the abort mechanism,
determines, itself, whether the user is not directing his or her gaze at the
contents of the display window. Not directing his or her gaze at the contents
of the display window corresponds to “not paying attention to materials in
the first window,” as recited in the claim. Whether the user of Hutchinson’s
device is thinking about the display window when not directing his or her
gaze at the window is irrelevant, because eye gaze direction is the sole
feature used by Hutchinson’s computing device to determine whether the
user is not paying attention to the contents in the window. Indeed, Patent
Owner’s contention would appear to confer mind-reading abilities on a
computer that are completely divorced from physical stimuli. We are
unpersuaded such a position is logical.
For the reasons given, we conclude that Petitioner has shown by a
preponderance of the evidence that Hutchinson anticipates claim 1.
b. Claims 37, 38, 40–42, 48, 55, and 56
Claim 37 recites “a sensor configured to: sense, in a session, an area
of the user to produce a first piece of data regarding a volitional behavior of
the user, the first piece of data being electronically linked to an identity of
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the user”; and “sense, in another session, an area of the user to produce a
second piece of data regarding another volitional behavior of the user”
(emphasis added). Claim 37 also recites “a processor coupled to the sensor
and the display, the processor configured to compare at least the first piece
of data with the second piece of data to help identify materials for presenting
to the user via the display.” Claims 38, 40–42, 48, 55, and 56 depend,
directly or indirectly, from claim 37.
Claims 37, 38, 40–42, 48, 55, and 56, therefore, each require a
processor that compares data from different sessions. Upon review of the
competing arguments and evidence presented by the parties, we are not
persuaded that Hutchinson discloses a processor that compares data from
different sessions.
Petitioner argues that Hutchinson discloses a processor that compares
sensed data from “a calibration session” with sensed data from “another
session (normal operation of the system).” Pet. 16–17, 35–36 (citing
Ex. 1003 ¶¶ 28, 64–68, 71); Pet. Reply 6–8. Petitioner further argues that
the calibration data “is necessarily electronically linked to the identity of the
user because it is specific for the particular user, and the system uses the
calibrated parameters during another session (normal operation of the
system).” Pet. 16–17 (citing Ex. 1003 ¶¶ 28, 64–66).
Under our claim interpretation, the term “session,” as recited in
claim 37, means the period of time between booting up and closing an
application on the computer, for example, by switching permanently to
another application or shutting down the computer. See supra
Section II.A.3. Hutchinson discloses executing a calibration routine “at the
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beginning of each Erica session.” Ex. 1004, 1530; see Pet. 36–37 (citing
Ex. 1003 ¶ 68). Contrary to Petitioner’s argument, the time devoted to
executing a calibration routine at the beginning of each Erica session is not a
separate “session” under a proper claim interpretation. Rather, the period of
time devoted to the calibration routine and the subsequent period of time
devoted to normal operation of the system are both part of the same
“session” (i.e., calibration is the initial portion of a session followed by
normal operation without permanent switching of applications or shutting
down of the computer as required by our construction). See Ex. 1004, 1530.
We credit the testimony of Mr. Crane that “Hutchinson does not disclose a
multi-session system.” Ex. 2009 ¶ 48; see id. ¶¶ 46–49.
For the reasons given, we conclude that Petitioner has not shown by a
preponderance of the evidence that Hutchinson anticipates claims 37, 38,
40–42, 48, 55, and 56.

C. Asserted Obviousness of Claims 2, 37, 38,
40–42, 48, 55, and 56 over Hutchinson
A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if
the differences between the subject matter sought to be patented 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 the subject matter pertains. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 406 (2007). A patent claim composed of several elements,
however, is not proved obvious merely by demonstrating that each of its
elements was known, independently, in the prior art. Id. at 418. In
analyzing the obviousness of a combination of prior art elements, it can be
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important to identify a reason that would have prompted one of skill in the
art to combine the elements in the way the claimed invention does. Id. A
precise teaching directed to the specific subject matter of a challenged claim
is not necessary to establish obviousness. Id. Rather, “any need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed.” Id. at 420. 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 skill in the art; and (4) objective evidence of
nonobviousness, i.e., secondary considerations, if in evidence. See Graham
v. John Deere Co., 383 U.S. 1, 17–18 (1966).
Petitioner challenges claims 2, 37, 38, 40–42, 48, 55, and 56 as
obvious over Hutchinson. As discussed below, we are persuaded that
claim 2, but not claims 37, 38, 40–42, 48, 55, and 56, would have been
obvious over Hutchinson.

1. Claim 2
Claim 2 recites:
2. A computer-implemented method as
recited in claim 1 further comprising waiting for a
period of time before adjusting,
wherein the adjusting comprises switching to
alternative materials that are different from
materials that would have been presented,
wherein the alternative materials include
materials on a product, and
wherein at least a portion of the alternative
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materials are configured to be retrieved by the
computing device, via a network, from another
computing device.

We agree with Petitioner that Hutchinson teaches the subject matter of
claim 2. Pet. 20, 41–42; Pet. Reply 5–6; Ex. 1003 ¶¶ 52–55. We agree, for
example, that Hutchinson discloses “waiting for a period of time before
adjusting,” as required by claim 2, “so that the user has a moment to alter his
or her gaze before the system adjusts what is being presented.” Pet. 20, 41
(citing Ex. 1004, 1530; Ex. 1003 ¶ 52). With respect to the “network”
requirement, we also agree that a person of ordinary skill in the art would
have known to retrieve materials from another computing device over a
network. Id. at 20, 42 (citing Ex. 1003 ¶¶ 9, 15, 55). There is evidence of
record that Black, for example, discloses such retrieval. Ex. 1003 ¶ 97.
Further, we agree that Hutchinson discloses “adjusting comprises switching
to alternative materials that are different from materials that would have
been presented,” and that including “materials on a product” would have
been obvious, as Petitioner contends. Pet. 20, 41–42 (citing Ex. 1004, 1530–
1531; Ex. 1003 ¶¶ 52–55).
Patent Owner responds that: “the ‘waiting before adjusting’ step must
be performed after the ‘determining’ step and, additionally, be a distinct step
from the ‘determining step’”; and that “Hutchinson . . . does not disclose a
‘waiting before adjusting step’ that is either separate and distinct from the
‘determining’ step or subsequent to it.” PO Resp. 29. Patent Owner argues
that, “[a]t most, Hutchinson discloses waiting as part of the determining
step.” Id. at 30. Patent Owner’s argument is not consistent with our
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interpretation that claim 2 encompasses “waiting for a period of time” as
part of the “determining” step. See supra Section II.A.4.
Hutchinson’s system satisfies the “waiting for a period of time before
adjusting” step by allowing the user “a moment” to change or abort an
enabled option before the system performs it. Ex. 1004, 1530 (emphasis
added). The system performs the option only if the user continues to stare at
the enabled option for a period of time (“a moment”) after a tone sounds and
an icon appears. Id.
For the reasons given, we conclude that Petitioner has shown by a
preponderance of the evidence that Hutchinson renders obvious claim 2.

2. Claims 37, 38, 40–42, 48, 55, and 56
Petitioner contends that any gaps in Hutchinson’s disclosure with
respect to the limitations of challenged claims 37, 38, 40–42, 48, 55, and 56
would have been obvious over Hutchinson in view of the knowledge of a
POSITA:
to the extent these claims are interpreted . . . such that any
limitations are considered not to be anticipated by Hutchinson
alone, such limitations are also rendered obvious by Hutchinson,
as a POSITA would have found such limitations obvious in
Hutchinson’s disclosure in light of the ordinary knowledge of the
POSITA and the state of the art known before August 13, 1996.
Pet. 19 (citing Ex. 1003 ¶ 82). Petitioner generally relies on Dr. Forsyth’s
declaration testimony to support its alternative obviousness challenges:
Additionally, to the extent that any variances in claim scope are
not necessarily shown by the support included in the below claim
charts, such variances would have been obvious to a POSITA
based on the level of ordinary skill in the pertinent art as it existed
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at the purported time of the invention for the reasons cited in the
accompanying expert declaration of Dr. Forsyth.
Id. (citing Ex. 1003 ¶¶ 9–12, 19–30, 41–82).
Initially, we note that our Institution Decision indicated that
“Petitioner has not presented an analysis sufficient to support modifying
Hutchinson beyond the teachings of Hutchinson itself.” Paper 12, 13. As
discussed above, Hutchinson does not disclose a processor that compares
data from different sessions and, therefore, does not anticipate claims 37, 38,
40–42, 48, 55, and 56. See supra Section II.B.2.b. While Petitioner argues
generally that any gaps in Hutchinson’s disclosure would have been obvious,
Petitioner does not provide any analysis or reasoning in the Petition or the
Reply to explain why a processor that compares data from different sessions
would have been obvious over Hutchinson in view of the knowledge of a
person of ordinary skill in the art. Indeed, as Patent Owner argues, the
Petition does not discuss certain portions of Dr. Forsyth’s Declaration that
appear to address the obviousness issue. See PO Resp. 38 n.6; see, e.g., Ex.
1003 ¶ 66.4 In the Patent Owner Response, Patent Owner characterizes
those portions of the Declaration as “additional arguments not discussed in
the Petition,” and states that Patent Owner is not responding to the
undiscussed “arguments” so as to avoid any reply by Petitioner. PO Resp.
38 n.6. On this record, we determine that Petitioner has not provided

4 “[A] POSITA would be motivated to save the calibration results for the
future so that calibration would not need to occur every time the system is
used. In this area of technology, saving data in a computer program was
very well known to a POSITA.”
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analysis or reasoning, with sufficient particularity, to establish the
obviousness of claims 37, 38, 40–42, 48, 55, and 56 over Hutchinson. See
35 U.S.C. § 312(a)(3); 37 C.F.R. §§ 42.22(a), (c), 42.104(b)(4)–(5); KSR,
550 U.S. at 418 (stating that “‘rejections on obviousness grounds cannot be
sustained by mere conclusory statements.’”) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)).
For the reasons given, we conclude that Petitioner has not shown by a
preponderance of the evidence that Hutchinson renders obvious claims 37,
38, 40–42, 48, 55, and 56.

D. Asserted Anticipation of Claims 1, 2, 18, and 22 by Black
Petitioner contends that Black anticipates claims 1, 2, 18, and 22.
Pet. 21–24, 42–52; Pet. Reply 12–15. As discussed below, we are persuaded
that Black anticipates claims 18 and 22, but not claims 1 and 2.

1. Overview of Black
Black discloses a system that tracks human head and facial features
over time by analyzing a sequence of images. Ex. 1005, Abstract. By
tracking head and eye motions of a user operating a computer, the system
can detect where on the screen the user is looking. Id. at 27:18–20.

2. Analysis
a. Claims 1 and 2
Claim 1 recites “adjusting, by the computing device, materials for
presenting to the user if the determining determines that the volitional input
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suggests the user not paying attention to materials in the first window”
(emphasis added). Claim 2 depends from claim 1.
According to Petitioner, Black discloses all limitations of claims 1
and 2, including the “determining” requirement emphasized above. Pet. 22–
23, 42–47. Patent Owner responds that Black does not disclose the
“determining” requirement because Black’s system “at most takes actions
based on where the user is looking and where the user is paying attention.”
PO Resp. 54. Petitioner replies that taking actions based on where the user
is looking and paying attention “necessarily ‘suggests the user not paying
attention to materials in the first window’ as required by the claim, since his
or her attention is directed elsewhere.” Pet. Reply 13.
We agree with Patent Owner. Petitioner’s arguments do not persuade
us that Black’s computing device, itself, determines whether the user is not
paying attention to materials in the first window, as required under our claim
interpretation. See supra Section II.A.5.
For the reasons given, we conclude that Petitioner has not shown by a
preponderance of the evidence that Black anticipates claims 1 and 2.

b. Claim 18
Claim 18 depends from claim 16.5 The limitations of claim 18
incorporated from claim 16 require, inter alia, a computer system
comprising a controller configured to “analyze the data [from the imaging
sensor regarding volitional behaviors that depend on at least facial

5 Claim 16 has been disclaimed, as discussed above.
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information of the user] to help determine what to present to the user . . . ,
wherein the system is configured to sense and analyze another volitional
behavior of the user using another sensor to help determine what to present
to the user, the another volitional behavior of the user being of a type
different from the volitional behaviors of the user.” Claim 18 additionally
requires that “the facial information is related to an eye behavior of the
user.”
Upon review of the competing arguments and evidence of record, we
determine that Black discloses each limitation of claim 18. Pet. 47–50; see
Ex. 1003 ¶¶ 98–104, 106; Pet. Reply 14. We are persuaded, for example,
that Black discloses a system that analyzes the data from an imaging sensor
to help determine what to present to the user based upon changes in the
volitional behaviors of the user related to an eye behavior of the user. See,
e.g., Pet. 47–50; Ex. 1005, 7:1–3, 28–45, 46–47, 15:16–27, 26:51–67, 27:2–
27, 28:55–59, 29:62–30:10, Figs. 4, 6, 7, 8A–8M; Ex. 1003 ¶¶ 98–104, 106.
We also are persuaded that Black discloses a system “configured to sense
and analyze another volitional behavior of the user using another sensor to
help determine what to present to the user, the another volitional behavior of
the user being of a type different from the volitional behaviors of the user.”
See, e.g., Pet. 49–50; Ex. 1005, 27:7–17; Ex. 1003 ¶ 104.
Patent Owner’s opposing argument is unpersuasive. See
PO Resp. 57–58. The crux of Patent Owner’s argument is that claim 18
requires a determination of what to present to the user based upon the data
from both of the sensors―i.e., the imaging sensor (related to a volitional eye
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behavior) and the “another sensor” related to “another volitional behavior of
the user” (such as voice). Id. Patent Owner argues:
Claim 18 requires, inter alia, a first “imaging sensor” to
sense a “volitional behavior” of a user “related to an eye behavior
of the user,” and “another sensor” to analyze another volitional
behavior of the user of another type. It then uses data from both
sensors to “determine what to present to the user.”
Id. at 57. Patent Owner acknowledges that Black’s system 4 discloses,
separately, determining what to present to the user based on eye motions and
determining what to present to the user based on voice commands, but
argues that “these separate disclosures do not teach that output from
system 4 related to an eye of the user (the putative ‘imaging sensor’) is
combined with data from a voice recognition system (the putative ‘another
sensor’) to determine what to present to the user.” Id. at 58.
We do not agree with Patent Owner that claim 18 requires a
determination of what to present to the user based upon the data from both
of the sensors. Nothing in the separate recitations “analyze the data [from
the imaging sensor regarding volitional behaviors of the user] to help
determine what to present to the user” and “analyze another volitional
behavior of the user using another sensor to help determine what to present
to the user” restricts the basis for making a determination to the combined
data from the two sensors. Further, we are not informed of anything in the
Specification or prosecution history that might support Patent Owner’s
asserted claim construction.
For the reasons given, we conclude that Petitioner has shown by a
preponderance of the evidence that Black anticipates claim 18.

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b. Claim 22
Claim 22 recites:
22. A computer system for a user comprising:
an imaging sensor configured to produce data
regarding volitional behaviors of the user at different times;
computer memory having materials for the user; and
a controller associated with the computer memory, the
controller configured to communicate with the imaging sensor
and analyze the data to have materials retrieved for the user,
based upon changes in the volitional behaviors,
wherein the imaging sensor is configured to be detached
from an area of the user to sense at least the area for producing
the data, and
wherein the controller is further configured to use a rule
regarding a speed of the user to analyze the volitional behaviors
of the user to help determine what to present to the user.
Ex. 1001, 17:18–33.
We agree that, as identified in Petitioner’s detailed claim chart, Black
discloses each limitation of claim 22. Pet. 50–52; see Ex. 1003 ¶¶ 107–112;
Pet. Reply 14–15. We are persuaded, for example, that Black discloses a
controller that is “configured to use a rule regarding a speed of the user to
analyze the volitional behaviors of the user to help determine what to present
to the user” (emphasis added). See, e.g., id. at 23, 51–52; Ex. 1005, 7:39–
43, Table 4; see Ex. 1003 ¶ 112. The claim term “a speed of the user”
means “a rate of performance or action of the user.” See supra Section
II.A.2. Corresponding to the requirement for a “rule regarding a speed of
the user,” Black discloses the gesture recognition rule that a “relatively long
pause before reversal of action” is indicative of the gesture “Shift
Attention.” Ex. 1005, Table 4.
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We do not agree with Patent Owner’s argument that “analyzing a
user’s movement over time is not a rule regarding ‘a speed of the user.’”
See PO Resp. 59. Here, the referenced gesture recognition rule is a rule
regarding a rate of action of the user as required by our claim construction.
For the reasons given, we conclude that Petitioner has shown by a
preponderance of the evidence that Black anticipates claim 22.

E. Asserted Obviousness of Claims 37
and 39 over Black and Garwin
Petitioner challenges claims 37 and 39 as obvious over Black and
Garwin. Pet. 52–56 (claim chart); Ex. 1003 ¶¶ 113–125, 127. As discussed
below, we are persuaded that the combination of Black and Garwin renders
obvious claims 37 and 39.

1. Overview of Garwin
Garwin discloses an embodiment that “employs light reflected from
the eyeball of a user to establish direction of gaze and employs parts of a
partitioned display area as the individual discrete information input
locations.” Ex. 1006, 3:19–23. Figure 2 of Garwin is reproduced below:
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Figure 1 illustrates user 1 viewing display 2, which is partitioned into
12 boxes. Id. at 2:5–6, 5:4–9. As shown in Figure 1, the user’s direction of
gaze communicates to processer 3 the selection, and order of selection, of
items from the 12 boxes. Id. at 5:9–13.
A calibration program correlates measurements of a user’s gaze to
aiming marks on a display surface, and calibration constants obtained from
the measurements are saved in memory with the user’s identity for later use
in equations for computing the user’s direction of gaze. Id. at 17:15–18:34.
In general, the calibration constants are stable with time for a given user,
and, in most cases, it is not necessary to do a complete recalibration. Id. at
18:15–18. Instead, the “stored calibration constants” are adjusted utilizing a
simplified procedure. Id. at 18:18–34.

2. Analysis
Petitioner contends that a POSITA would have combined the
teachings of Black and Garwin “because they are directed to the same field
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of human-computer interfaces and describe similar systems.” Pet. 28 (citing
Ex. 1003 ¶¶ 114–115). In support of this contention, Dr. Forsyth testifies
that “both Black and Garwin describe methods to sense human actions and
adjust displays accordingly,” and “[a] POSITA would have recognized that
techniques from Black and Garwin could be used in these same scenarios
and could be combined into functioning systems.” Ex. 1003 ¶ 114.
Petitioner additionally contends that “a POSITA would have been prompted
to modify Black’s system to incorporate calibration as disclosed in Garwin
in order to enhance the accuracy and use of the system.” Pet. 28 (citing
Ex. 1003 ¶¶ 28, 114–115).
We determine that incorporating Garwin’s eye-gaze teachings in
Black’s system would have been a predictable improvement. See Ex. 1003
¶ 114. Black discloses tracking head and eye motions of a user to determine
where the user is looking in order to make selections from windows on a
computer screen, but does not disclose a calibration methodology. Ex. 1005,
27:18–27. Garwin teaches tracking a different volitional action of the
user―the user’s direction of eye gaze―to determine where the user is
looking in order to make selections from windows on a computer screen.
Ex. 1006, 2:5–13, Fig. 1. In addition, Garwin teaches a calibration
methodology for accurately measuring the direction of eye gaze of
individual users. Ex. 1006, 17:15–18:34. We are persuaded that
incorporating Garwin’s eye-gaze teachings in Black’s system would have
amounted to nothing more than using a known technique to improve a
similar system in the same way. See Pet. 28–29; KSR, 550 U.S. at 417 (“[I]f
a technique has been used to improve one device, and a person of ordinary
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skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.”).
Patent Owner’s arguments challenging Petitioner’s rationale for
combining the references are unpersuasive. See PO Resp. 52–53. For
example, Patent Owner argues that “the Petition fails to explain how
‘calibration as disclosed in Garwin’ can or should be implemented in Black
so as to disclose the limitations of Claim 37.” Id. Patent Owner’s argument
appears to focus on differences in the individual references rather than the
teachings of the references combined. In particular, Patent Owner does not
explain why the calibration methodology taught by Garwin could not be
incorporated, without significant change, into the Black/Garwin
combination.
We agree with Petitioner, moreover, that the combination of Black
and Garwin teaches the subject matter of claims 37 and 39. Pet. 24–27, 52–
56; Ex. 1003 ¶¶ 113–125, 127; see Pet. Reply 9–12. For example, we are
persuaded that the asserted combination teaches a processor that compares
data from different sessions. See supra Section II.B.2.b (discussing the
different sessions requirement of claim 37 with respect to Hutchinson). In
the combination of Black and Garwin, a user’s calibration data would be
saved during an initial session and compared with data in a subsequent
session of the user in order to determine the user’s direction of eye gaze.
See Ex. 1006, 16:25–17:4, 17:15–18:34; Ex. 1003 ¶¶ 120–121, 123.
In opposition, Patent Owner advances several arguments.
PO Resp. 47. Patent Owner first argues that “Garwin does not teach the
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claimed multi-‘session’ approach because Garwin’s calibration is not a
‘session.’” Id. We are not persuaded by Patent Owner’s argument because
claim 37 does not require a separate session devoted entirely to calibration.
Patent Owner also argues that Garwin’s calibration constants are not
“data regarding a volitional behavior of the user,” as recited in claim 37. Id.
Specifically, Patent Owner argues that Garwin’s calibration constants C2, C3,
D2 and D3 are obtained independent from any particular user and that
Garwin’s remaining calibration constants, i.e., C1, C4–C8, D1, and D4–D8,
while based on a particular user, depend on the internal details of the user’s
eye and, for that reason, are not data regarding a volitional behavior of the
user. PO Resp. 48–50. We disagree. As Petitioner argues in reply,
Garwin’s calibration constants C1, C4–C8, D1, and D4–D8 are obtained by
measuring the user’s volitional gaze to aiming marks on a display surface.
See Pet. Reply 9–10 (citing Ex. 1006, 17:16–19, 17:34–18:2 and Ex. 1003
¶ 120). As such, the calibration constants are data regarding a volitional
behavior of the user. Whether the constants depend on the internal details of
the user’s eye, as Patent Owner contends, is not relevant to the scope of the
claim requirement.
Patent Owner next argues that “Garwin does not teach ‘compar[ing]’
data from its calibration routine and its normal operation session as
claimed.” PO Resp. 47. Specifically, Patent Owner argues that the
constants C1–C8, D1–D8 simply are “multipliers” in equations used in Garwin
for locating the user’s gaze on the screen, and “[t]he Petition does not show
that any comparison is made during the normal session of Garwin between
data obtained in the normal session and data obtained via calibration.” Id.
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at 51 (citing Ex. 1006, 16:14–17). We are not persuaded by Patent Owner’s
argument, at least because it does not account for Garwin’s simplified
recalibration methodology. See Ex. 1006, 18:15–34. During recalibration at
the beginning of a normal operation session, the user directs his or her gaze
to a single target at a known location, and a subroutine uses the stored
calibration constants from a previous session, including Cl and Dl, to
calculate the apparent location of the target as seen by the user. Id. at 18–25.
The subroutine then “modifies the constants Cl and Dl so that the computed
location agrees with the known location.” Id. at 26–27 (emphasis added).
The disclosure of a recalibration subroutine that modifies the stored
constants Cl and Dl based on data from the current session teaches a
processor that compares data from different sessions, as the claim requires.
For the reasons given, we conclude that Petitioner has shown by a
preponderance of the evidence that claims 37 and 39 would have been
obvious over Black and Garwin.

III. CONCLUSION
For the foregoing reasons, we determine that Petitioner has shown by
a preponderance of the evidence that claims 1, 2, 18, 22, 37, and 39 are
unpatentable, but has not shown by a preponderance of the evidence that
claims 38, 40–42, 48, 55, and 56 are unpatentable.

IV. ORDER
In view of the foregoing, it is hereby:
ORDERED that claims 1, 2, 18, 22, 37, and 39 of U.S. Patent
No. 8,475,174 B2 are unpatentable; and
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FURTHER ORDERED that claims 38, 40–42, 48, 55, and 56 of U.S.
Patent No. 8,475,174 B2 are patentable.
This is a Final Written Decision. Parties to the proceeding seeking
judicial review of the decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2.

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PETITIONER:

John C. Phillips
David B. Conrad
Jonathan Lamberson
FISH & RICHARDSON P.C.
phillips@fr.com
conrad@fr.com
lamberson@fr.com
IPR35797-0015IP1@fr.com

PATENT OWNER:

Kenneth J. Weatherwax
Parham Hendifar
GOLDBERG, LOWENSTEIN & WEATHERWAX LLP
weatherwax@glwllp.com
hendifar@glwllp.com