Apple Inc. v. Gesture Technology Partners, LLC

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC.,
Appellant
v.
GESTURE TECHNOLOGY PARTNERS, LLC,
Appellee
______________________
2023-1494
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2021-
00923, IPR2022-00093, IPR2022-00361.
______________________
Decided: June 5, 2025
______________________
ABIGAIL COLELLA, Orrick, Herrington & Sutcliffe LLP,
Washington, DC, argued for appellant. Also represented
by MELANIE L. B OSTWICK; ELIZABETH M OULTON, San Fran-
cisco, CA; CLIFFORD T. BRAZEN, ADAM P RESCOTT SEITZ,
Overland Park, KS; PAUL R. HART , Denver, CO.
F RED WILLIAMS , Williams, Simons, and Landis PLLC,
Austin, TX, argued for appellee. Also represented by ERIC
CARR, MARK J OHN E DWARD MCCARTHY ; J OHN
WITTENZELLNER, Philadelphia, PA.
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APPLE INC. v. GESTURE TECHNOLOGY PARTNERS , LLC 2
______________________
Before M OORE, Chief Judge, P ROST and STOLL , Circuit
Judges.
Opinion for the court filed by Circuit Judge STOLL .
Opinion dissenting filed by Circuit Judge P ROST .
STOLL , Circuit Judge.
Apple Inc. appeals the Patent Trial and Appeal Board’s
Final Written Decision in an inter partes review of U.S. Pa-
tent No. 8,194,924. Apple challenges the Board’s finding
that an asserted prior art reference fails to qualify as anal-
ogous art. Because substantial evidence supports the
Board’s finding, we affirm.
BACKGROUND
I
The ’924 patent is owned by Gesture Technology Part-
ners, LLC and is titled “Camera Based Sensing in
Handheld, Mobile, Gaming or Other Devices.” U.S. Patent
No. 8,194,924 Title. The Abstract discloses that the inven-
tion is directed to methods and apparatuses “to enable
rapid TV camera and computer based sensing in many
practical applications, including, but not limited to,
handheld devices, cars, and video games.” Id. Abstract.
The ’924 patent specification describes the “Field of the In-
vention” as “relat[ing] to simple input devices for comput-
ers . . . and operating by optically sensing a human input
to a display screen or other object and/or the sensing of hu-
man positions or orientations.” Id. col. 2 ll. 7–11. Before
the Board, both parties explained that the ’924 patent “de-
scribes computer devices that ‘optically sens[e] human in-
put’ using one or more cameras, contemplating
applications in a ‘variety of fields such as computing, gam-
ing, medicine, and education.’” J.A. 692 (alteration in orig-
inal) (quoting ’924 patent col. 2 ll. 7–11) (Apple’s
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APPLE INC. v. GESTURE TECHNOLOGY PARTNERS , LLC 3
Declaration of Dr. Benjamin B. Bederson); see also J.A. 94
(Apple’s IPR Petition); J.A. 199 (Gesture Technology’s Ini-
tial Patent Owner Response).
The ’924 patent discloses several applications in which
a user or an object held by a user can control a computer
with one or more cameras, as illustrated in Figure 1A:
’924 patent Fig. 1A. The figure depicts “a combination of
one or more TV cameras (or other suitable electro-optical
sensors) and a computer to provide various position and
orientation related functions of use.” Id. col. 3 ll. 19–23. In
this embodiment, there are multiple cameras (100, 101,
144) located on a monitor (102) with a screen (103) facing a
user and connected to a computer (106). Id. col. 3 ll. 27–56.
In another example, the ’924 patent discloses a
handheld computer with multiple cameras, as depicted in
Figure 18:
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APPLE INC. v. GESTURE TECHNOLOGY PARTNERS , LLC 4
Id. Fig. 18. As illustrated, a handheld computer (1901)
with a central processing unit houses a camera (1902) that
can be paired with another camera (1910) mounted on a
display (1940). Id. col. 25 l. 40–col. 26 l. 5. When aimed at
the user, the cameras can be used to obtain images of a
user’s fingers, hand, objects in hand, gestures, and facial
expressions, which can in turn be used to control computer
objects on the display. Id. col. 25 ll. 50–63.
Claim 1, the ’924 patent’s only independent claim, is il-
lustrative:
1. A handheld device comprising:
a housing;
a computer within the housing;
a first camera oriented to view a user of the
handheld device and having a first camera output;
and
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APPLE INC. v. GESTURE TECHNOLOGY PARTNERS , LLC 5
a second camera oriented to view an object other
than the user of the device and having a second
camera output, wherein the first and second cam-
eras include non-overlapping fields of view, and
wherein the computer is adapted to perform a con-
trol function of the handheld device based on at
least one of the first camera output and the second
camera output.
Id. col. 26 ll. 54–65. Both parties interpret claim 1 to re-
quire (1) camera-based sensing of human gesture inputs
and (2) interpreting that gesture input to be a control com-
mand. See, e.g., Appellant’s Br. 28 (“The ’924 claims recite
a handheld device with two cameras, one facing the user,
one facing out, that ‘perform[s] a control function of the
handheld device based on . . . camera output.’” (alterations
in original) (citation omitted)); Oral Arg. at 1:51–2:08,
https://oralarguments.cafc.uscourts.gov/default.aspx?fl=
23-1494_12042024.mp3 (“We definitely believe that the
claims here do require optical detection . . . .”).
II
A
In its IPR Petition, Apple asserted three grounds
against claims 1–14 of the ’924 patent, all of which in-
cluded the combination of Numazaki1 and Mann,2 while
two grounds also included additional prior art references
Amir3 and Aviv.4 The sole issue on appeal is whether the
reference Mann is analogous art to the ’924 patent.
1 U.S. Patent No. 6,144,366.
2 Canadian Published Patent Application
No. 2,237,939.
3 U.S. Patent No. 6,539,100.
4 U.S. Patent No. 5,666,157.
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APPLE INC. v. GESTURE TECHNOLOGY PARTNERS , LLC 6
Mann is directed to “means and apparatus for personal
documentary photography and videography . . . [with] a
personal camera with viewfinder means and a personal
video annotation system . . . [such that t]he camera system
integrates the process of making a personal handwritten
diary or the like, with the capture of video.” J.A. 772. The
Abstract also explains that the invention allows for “[v]ideo
of a subject such as an official behind a counter [to] be cap-
tured by a customer or patron of an establishment, in such
a manner that the official cannot readily determine
whether or not video is being captured with the handwrit-
ten notes or annotations.” Id. The “Background of the In-
vention” goes on to explain that “[c]urrent state-of-the-art
photographic or video apparatus cause[] a visual disturb-
ance to others and attracts considerable attention on ac-
count of the gesture of bringing the camera up to the eye,”
and “covert cameras . . . tend to produce inferior images,
not just because of the technical limitations imposed by
their small size, but, more importantly because they lack a
viewfinder means.” J.A. 773–74. Accordingly, Mann “pro-
posed [] a camera and viewfinder means for unobtrusively
capturing video of exceptionally high compositional qual-
ity . . . , and some embodiments of this invention [] are
hand-held rather than body-worn.” J.A. 774–75. “A typical
embodiment of the invention comprises a hand-held pen-
based computer or a combination clipboard and pen-based
computer input device.” J.A. 775.
For example, Figure 1 depicts “a camera borne by a
personal digital assistant (PDA),” J.A. 782:
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APPLE INC. v. GESTURE TECHNOLOGY PARTNERS , LLC 7
J.A. 796. As shown in this embodiment, the PDA includes
a video camera (110), an auxiliary screen (120) for display-
ing the image captured by the video camera, a screen for
notetaking (130), and a pen (140). J.A. 783–84. Using the
pen (140), annotations made on screen (130) “may also be
captured and stored together with videoclips from cam-
era 110.” J.A. 784. The PDA can also include a second
camera (150), “if the user wishes to make a video recording
of himself/herself while recording another person with
camera 110.” Id. “In this way, both sides of the conversa-
tion may be simultaneously recorded by the two cameras,
so that the resulting recordings could be edited later, so
that there could, for example, be a cut back and forth
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APPLE INC. v. GESTURE TECHNOLOGY PARTNERS , LLC 8
between the two cameras to follow the natural flow of the
conversation.” Id. The PDA is also connected via a
wire (160) to a separate body worn pack (170) that allows
the device to connect to the internet. Id.
Mann also teaches a “wristwatch embodiment 300 of
the invention depicted in Fig[ure] 1,” J.A. 785, which is
shown in Figure 3:
J.A. 798. As illustrated, a wristwatch houses a first cam-
era (310) pointed to record a person other than the wearer
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APPLE INC. v. GESTURE TECHNOLOGY PARTNERS , LLC 9
and a second camera (350) to record the wristwatch wearer
interviewing the other person. J.A. 785. The wristwatch
also includes a viewfinder in the form of an auxiliary
screen (320), which shows the image from the first camera.
Id. Like in the embodiment shown in Figure 1, a separate
internet-connected computer system is worn as a body
pack. In this embodiment, “[c]amera 310 points forward
such that, for example, while a customer is wearing the
wristwatch embodiment of the invention and is standing at
a counter, he or she can place his or her arm naturally upon
the counter and aim the camera 310 at the official behind
the counter without appearing unusual.” Id. Mann
teaches that “[i]nteraction with the wristwatch version of
the invention . . . may be done through a pen-based or
touch-based interface to the screen.” J.A. 786.
B
In its IPR Petition, Apple stated that, “[b]ecause Mann,
like the ’924 Patent, discloses a portable camera system
that may be controlled by human gesture input, Mann is in
the same field of endeavor as the ’924 Patent.” J.A. 106
(comparing J.A. 773, 783–84, 786, with ’924 patent Ab-
stract, col. 25 ll. 40–41, 50–63). But in describing Amir,
Apple argued that, “[b]ecause Amir, like the ’924 Patent,
discloses a portable camera system that controls the oper-
ation of the device based on captured image information,
Amir is in the same field of endeavor as the ’924 Patent.”
J.A. 142–43 (citing the same part of the ’924 patent’s spec-
ification as for Mann). And in describing Aviv, Apple con-
tended that “[b]ecause Aviv, like the ’924 Patent, discloses
a camera system that controls the operation of the device
based on captured image information, Aviv is in the same
field of endeavor as the ’924 Patent.” J.A. 154 (citing the
same part of the ’924 patent’s specification as for Mann).
The Board instituted the IPR. In its Patent Owner Re-
sponse after institution, Gesture Technology contended
that Apple failed to establish that Mann was analogous art
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APPLE INC. v. GESTURE TECHNOLOGY PARTNERS , LLC 10
to the ’924 patent. As to the field of endeavor test, Gesture
Technology argued that Apple improperly failed to “iden-
tif[y] a field of endeavor for either the ’924 Patent or Mann.
Instead, [Apple] has found teachings in the two documents
that allegedly overlap, and then deemed the two docu-
ments as belonging to the same field of endeavor because
of the alleged overlap.” J.A. 284. Gesture Technology fur-
ther pointed out that Apple had failed to identify a shared
problem from both the ’924 patent and Mann, thus failing
to meet the reasonably pertinent to a particular problem
test.
In its Petitioner’s Reply, Apple’s entire response re-
garding whether Mann was analogous art was:
For Mann . . . , Patent Owner alleges the Petition
failed to define a field of endeavor in its analogous
art discussions. Patent Owner is wrong. For
Mann, the petition applies an identical field of en-
deavor definition to that applied to Numazaki—
[i.e., ]Mann, Numazaki, and the ’924 Patent are
each directed to “a portable camera system that
may be controlled by human gesture input[.]” Tell-
ingly, Patent Owner does not take issue with the
field of endeavor analysis applied to Numazaki.
J.A. 359 (citations omitted) (third alteration original).
C
In its Final Written Decision, the Board held that Ap-
ple had not carried its burden to show Mann was in the
same field of endeavor as the ’924 patent and had waived
any argument under the reasonably pertinent to a particu-
lar problem test, thus failing to demonstrate that Mann
was analogous art to the ’924 patent. Apple does not chal-
lenge the Board’s finding of waiver on appeal.
The Board explained that, under the field of endeavor
test, Apple took the “unique approach” of not expressly de-
fining the field of endeavor for either the ’924 patent or
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APPLE INC. v. GESTURE TECHNOLOGY PARTNERS , LLC 11
Mann, and instead only identified an “overlap in a general
category of disclosure,” J.A. 11: “a portable camera system
that may be controlled by human gesture input.” Id. (quot-
ing J.A. 106). But, the Board further explained, this ap-
proach led Apple to characterize the ’924 patent’s field of
endeavor differently when discussing prior art references
Amir and Aviv—i.e., as “a camera system that controls the
operation of the device based on captured image infor-
mation.” J.A. 12 (citing J.A. 142–43, 154). Moreover, the
Board continued, Mann does not “disclose[] a camera sys-
tem that controls the operation of the device based on cap-
tured image information.” Id. (alteration in original).
When asked about this at the hearing, Apple characterized
the ’924 patent’s field of endeavor “in relation to Amir and
Aviv as ‘slightly broader’ than” and “not competing” with
that for Mann. Id. (citation omitted). The Board was not
convinced:
[Apple]’s asserted field of endeavor covering Mann
does not require that the human gesture input be
“captured image information” as it does for Amir
and Aviv. On the other hand, if the field of en-
deavor of “a portable camera system that may be
controlled by human gesture input” requires that
the human gesture input be “captured image infor-
mation,” then the field of endeavor does not cover
Mann.
J.A. 12–13. The Board thus found that Apple had not sat-
isfied its burden to show that Mann is analogous art to the
’924 patent.
The Board went on to describe how Apple provided no
analysis as to why it was appropriate to have different
fields of endeavor based on the same cited disclosures in
the ’924 patent, providing as an example Apple’s “contra-
dictory positions that the cited portions of the ’924 patent
teach that the field of endeavor may or may not require
‘control[ of] the operation of the device based on captured
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APPLE INC. v. GESTURE TECHNOLOGY PARTNERS , LLC 12
image information,’” and “may or may not require ‘human
gesture input.’” J.A. 13 (alteration in original). The Board
then considered the three citations Apple provided from the
’924 patent in reference to Mann and found that none sup-
ported Apple’s position that camera based sensing is op-
tional: “the Abstract refers to camera based sensing,
25:40–41 says a handheld computer includes a camera, and
25:50–63 describes a camera obtaining an image of many
things, including gestures.” J.A. 14.
The Board further found that Apple’s proposed field of
endeavor for the ’924 patent and Mann—“a portable cam-
era system that may be controlled by human gesture in-
put”—was inconsistent with its prior statements and the
’924 patent itself. Id. First, the Board noted that the par-
ties’ descriptions of the ’924 patent from before the analo-
gous art dispute arose described the ’924 patent as directed
to “computer devices that optically sense human input us-
ing one or more cameras, contemplating applications in a
variety of fields such as computing, gaming, medicine, and
education.” Id. (quotation marks and citation omitted)
(cleaned up). And both parties described the ’924 patent’s
embodiments and claims as “requiring computer devices
that optically sense human input using one or more cam-
eras.” Id. (citations omitted). The Board explained that
the parties’ descriptions were consistent with the Title, Ab-
stract, Field of the Invention, and claims of the ’924 patent.
J.A. 15 (citing ’924 patent Title (“Camera Based Sens-
ing . . .”), Abstract (“. . . TV camera and computer based
sensing . . .”), col. 2 ll. 7–23 (“. . . optically sensing a human
input . . .”), claim 1 (“a first camera . . . and a second cam-
era” “perform a control function of the handheld device
based on at least one of the first camera output and the
second camera output”)). The Board thus “agree[d] with
the parties that the ’924 patent is directed to computer de-
vices that optically sense human input using one or more
cameras.” Id. (quotation marks and citation omitted)
(cleaned up). Accordingly, the Board found that Apple’s
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APPLE INC. v. GESTURE TECHNOLOGY PARTNERS , LLC 13
proposed field of endeavor for Mann was both too narrow,
as it included “portable,” and too general, as it included
“‘human gesture input’ not tied to optically sensing the in-
put with a camera.” Id. The Board explained that “camera
based sensing of the input is the one feature that is present
in all of the noted sections of the ’924 patent and is high-
lighted by the parties,” and was also “included in the fields
of endeavor with respect to Amir and Aviv in the Petition,
but absent without explanation” for Mann. Id.
Because Apple relied on Mann in all grounds in its Pe-
tition, the Board determined that Apple had not proven by
a preponderance of the evidence that any of the challenged
claims were unpatentable. Apple appeals. We have juris-
diction under 28 U.S.C. § 1295(a)(4)(A).
D ISCUSSION
Our precedent sets forth two separate tests to define
the scope of analogous art: “(1) whether the art is from the
same field of endeavor, regardless of the problem ad-
dressed and, (2) if the reference is not within the field of
the inventor’s endeavor, whether the reference still is rea-
sonably pertinent to the particular problem with which the
inventor is involved.” Airbus S.A.S. v. Firepass Corp.,
941 F.3d 1374, 1379 (Fed. Cir. 2019) (quoting In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004)). “Whether a prior art
reference qualifies as analogous prior art is a question of
fact that we review for substantial evidence.” Netflix, Inc.
v. DivX, LLC, 80 F.4th 1352, 1358 (Fed. Cir. 2023).
Based on the record before us, we hold that substantial
evidence supports the Board’s finding that the field of en-
deavor of the ’924 patent is computer devices that optically
sense human input using one or more cameras. See
J.A. 15. Indeed, Apple advanced a consistent field of en-
deavor as one of its two proposals. As discussed, Apple
proffered conflicting fields of endeavor: first, for Mann, a
“portable camera system that may be controlled by human
gesture input,” J.A. 106, and similarly for Numazaki a
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APPLE INC. v. GESTURE TECHNOLOGY PARTNERS , LLC 14
“portable camera system that may be controlled by human
gesture input,” J.A. 110, but it later proposed for Amir a
“portable camera system that controls the operation of the
device based on captured image information,” J.A. 142–43
(emphasis added), and similarly for Aviv a “camera system
that controls the operation of the device based on captured
image information,” J.A. 154 (emphasis added). The Board
essentially adopted the narrower of Apple’s proposals, re-
quiring optical sensing. We cannot say that the Board
erred on this record. In other words, substantial evidence
supports the Board’s finding because Apple’s proffered field
for other prior art required optical sensing. Furthermore,
the Board’s finding is supported by the ’924 patent itself,
including by the Title, “Camera Based Sensing . . . ”; the
Abstract, which discloses “. . . camera and computer based
sensing . . . ”; and the “Field of Endeavor,” which states
that “the invention relates to simple input devices for com-
puters . . . operating by optically sensing a human input to
a display screen or other object and/or the sensing of hu-
man positions or orientations.” ’924 patent col. 2 ll. 7–11.
Additionally, the field of invention that a patent is di-
rected to generally should not vary based on the prior art
reference it is being compared to for purposes of the analo-
gous art inquiry. That is not to say it could never vary, and
we acknowledge that the analogous art inquiry is highly
factual and “the scope of any field of endeavor will vary
with the factual description of each invention.” Bigio,
381 F.3d at 1326. There may be some situations where a
patent might have more than one field of endeavor—for ex-
ample, where the specification discloses various distinct
embodiments and the claims-at-issue are directed to one of
them. But that is not the case here, and we see no basis for
Apple’s attempt to define the field of endeavor differently
based on the very same cited disclosures from the patent-
in-suit in relation in an attempt to show different prior art
references are analogous to the claims.
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APPLE INC. v. GESTURE TECHNOLOGY PARTNERS , LLC 15
Moreover, we cannot say that the Board erred in find-
ing Mann non-analogous given how Apple litigated this is-
sue before the Board. Under SAS Institute, Inc. v. Iancu,
and the Administrative Procedure Act (APA), the Board is
limited by the parties’ presentation of arguments and evi-
dence to arrive at its fact findings. 584 U.S. 357, 363–68
(2018).5 Apple did not rely on the second prong of the anal-
ogous art test—i.e., that Mann is “reasonably pertinent to
the particular problem with which the inventor is in-
volved.” Airbus, 941 F.3d at 1379. We do not decide
whether a broader and more general statement of the field
of endeavor was available had the parties adopted a
broader interpretation of claim 1.6 Here, Apple’s proffered
claim construction is not inconsistent with the Board’s fact
finding on the field of endeavor.
Our opinion in this case should serve as a warning to
patent owners and petitioners alike in proceedings before
the Board. When a patent owner challenges whether an
asserted prior art reference is analogous, the petitioner
5 We are also not persuaded by Apple’s contention
the Board violated the APA when it resolved the parties’
dispute over whether Mann was analogous art. As dis-
cussed above, Apple was on notice that Gesture Technology
was disputing whether Mann qualified as analogous art,
Apple did not itself define what the ’924 patent’s field of
endeavor was, and the Board’s adopted field of endeavor is
consistent with one proposed by Apple itself, albeit for a
different prior art reference. In these circumstances, we do
not see how Apple did not have notice or the opportunity to
respond to the Board’s findings.
6 Both parties read claim 1 to require camera based
sensing of non-touch gestures and interpreted the camera
based sensing inputs as controlling commands of the de-
vice. See, e.g., Appellant’s Br. 28; J.A. 448 (Evidentiary
Hearing Tr. 26:19–26); Oral Arg. at 1:51–2:08.
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APPLE INC. v. GESTURE TECHNOLOGY PARTNERS , LLC 16
must devote care and effort to carefully defining the field
of the invention, addressing the reasonably pertinent prob-
lem test where necessary, and fully responding based on
the facts and law. Otherwise, petitioners run the risk of an
adverse fact finding with little basis for challenging that
finding on appeal under our standard of review, which
merely asks whether there is “such relevant evidence as a
reasonable mind might accept as adequate to support” said
fact finding. Arendi S.A.R.L. v. Google LLC, 882 F.3d
1132, 1133 (Fed. Cir. 2018) (quoting Consol. Edison Co. of
N.Y. v. NLRB, 305 U.S. 197, 229 (1938)) (describing the
substantial evidence standard); see also Medtronic, Inc.
v. Teleflex Innovations S.a.r.l., 69 F.4th 1341, 1348
(Fed. Cir. 2023) (quoting Velander v. Garner, 348 F.3d
1359, 1378 (Fed. Cir. 2003)) (explaining that even “[i]f the
evidence will support several reasonable but contradictory
conclusions, we will not find the Board’s decision unsup-
ported by substantial evidence simply because the Board
chose one conclusion over another plausible alternative.”).
CONCLUSION
We have considered Apple’s arguments and find them
unpersuasive. For the foregoing reasons, we affirm the
Board’s holding that Apple had not carried its burden to
show the challenged claims of the ’924 patent were un-
patentable.
AFFIRMED
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N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC.,
Appellant
v.
GESTURE TECHNOLOGY PARTNERS, LLC,
Appellee
______________________
2023-1494
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2021-
00923, IPR2022-00093, IPR2022-00361.
______________________
P ROST , Circuit Judge, dissenting.
I appreciate the majority’s emphasis on the “unique”
factual circumstances of this case, which may have driven
the result here. Maj. 10–11. However, I remain concerned
that the Board’s approach to the field-of-endeavor analysis
is too narrow and contradicts our case law repeatedly hold-
ing analogous art should be construed “broadly.” Wyers v.
Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010); see
also Netflix, Inc. v. DivX, LLC, 80 F.4th 1352, 1359 (Fed.
Cir. 2023). I respectfully dissent and would reverse the
Board on substantial-evidence review. Further, I respect-
fully disagree that the Board did not violate the APA. The
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APPLE INC. v. GESTURE TECHNOLOGY PARTNERS , LLC 2
Board, in my view, violated the APA by going beyond the
scope of the parties’ arguments and defining a new field of
endeavor in the final written decision that was not ad-
vanced by either party without giving notice and an oppor-
tunity to respond. I address these two issues below.
I
The Mann prior-art reference discloses a device that
has two cameras, senses human input, and uses that input
to control the device. Mann does not, however, use human
input sensed by the cameras to control the device; that is
the point of novelty of the ’924 patent. Yet, because Mann
does not disclose this feature, the Board excluded it alto-
gether from the obviousness analysis.
At bottom, the Board erred by defining the field of en-
deavor of the ’924 patent too narrowly, focusing on the spe-
cific point of novelty. This is not, in my view, consistent
with our holding in Unwired Planet, LLC v. Google Inc.,
841 F.3d 995 (Fed. Cir. 2016). In Unwired, we held that
“[t]he field of endeavor of a patent is not limited to the spe-
cific point of novelty, the narrowest possible conception of
the field, or the particular focus within a given field.” Id.
at 1001.
The Board defined the field of endeavor for the ’924 pa-
tent as computer devices that optically sense human input
using one or more cameras. J.A. 15. The Board’s analysis
reveals that it also imported a control function into this
definition (i.e., actuation of functionality based on the opti-
cally sensed human input). J.A. 15 (“Implicit in this state-
ment is that the human input is used to control the
computer device.”). To suggest, as the Board does, that the
field of endeavor must be limited to camera-based sensing
used for controlling the computer device essentially short-
circuits the ultimate obviousness inquiry. The Board’s
finding also goes against the general rule that we should
“construe the scope of analogous art broadly,” comporting
with the broad and flexible approach to obviousness
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APPLE INC. v. GESTURE TECHNOLOGY PARTNERS , LLC 3
demanded by KSR. Wyers, 616 F.3d at 1238 (citing KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007)).
The Board also took issue with Apple having articu-
lated the field of endeavor in multiple, allegedly contradic-
tory, ways. J.A. 12–13. But the notion that the field of
endeavor for a patent can only ever be articulated a single
way goes too far. As the majority recognizes, there is no
per se rule that a patent’s field of endeavor must be articu-
lated in only one way. Maj. 14. What matters is “that the
prior art reference falls within the relevant field of en-
deavor of the patent-in-suit.” Netflix, 80 F.4th at 1359. So,
it makes sense why the “relevant” articulation of the field
of endeavor might differ depending on the prior-art refer-
ence at issue; the relevant one is the one that overlaps with
the prior-art reference. In any event, I do not believe that
substantial evidence supports the Board’s finding that the
fields of endeavor articulated by Apple are contradictory.
Rather, the different articulations of field of endeavor with
respect to the different references serve to highlight differ-
ent (but complementary) points of commonality between
the respective references and the ’924 patent. See Appel-
lant’s Br. 31.
II
I am also concerned with the Board’s definition of a new
field of endeavor in its final written decision that was not
advanced by either party. Apple articulated a field of en-
deavor in its Petition with respect to Mann, which is the
same field of endeavor noted in its reply. In response to the
Petition, Gesture did not argue that the field of endeavor
was incorrect. Rather, Gesture argued that Apple failed to
articulate a field of endeavor for either the ’924 patent or
Mann. J.A. 284. While Gesture itself had no burden to
identify the field of endeavor for Apple, the fact remains
that Gesture made a singular argument in its Patent
Owner Response that facially failed because Apple demon-
strated the Petition did articulate a field of endeavor with
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APPLE INC. v. GESTURE TECHNOLOGY PARTNERS , LLC 4
respect to Mann and the ’924 patent. This should have
been the end of the Board’s inquiry on the matter.
While I disagree that the Board’s reasoning as to Ap-
ple’s identified field of endeavor was supported by substan-
tial evidence (as explained above), it was further erroneous
and a violation of the APA for the Board to go beyond the
parties’ arguments and define a new field of endeavor with-
out giving notice and an opportunity to respond.
For these reasons, I respectfully dissent.
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