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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
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`AMERICA, INC. AND APPLE, INC.,
`
`Petitioners
`
`v.
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`NEONODE SMARTPHONE LLC,
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`Patent Owner
`
`____________
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`Case IPR2021-00144
`U.S. Patent No. 8,095,879
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`
`
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`PATENT OWNER NEONODE SMARTPHONE LLC’S
`PRELIMINARY RESPONSE
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`
`
`
`TABLE OF CONTENTS
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`IPR2021-00144
`Preliminary Response
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`Page
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`I.
`II.
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`INTRODUCTION ........................................................................................... 1
`PETITIONERS HAVE FAILED TO SHOW THAT ANY
`CLAIM IS UNPATENTABLE ....................................................................... 3
`A. Grounds 1A – 1E: Petitioners Fail to Show that Claim 1
`is Obvious Over the Combination of Ren and Tanaka ......................... 3
`1.
`A POSA Would Not have been Motivated to
`Incorporate the a→c→b→a Variant of Ren’s Slide
`Off Target Selection Strategy into Tanaka ................................. 3
`a.
`Ren Teaches Away from the Slide Off
`Strategy .............................................................................. 4
`The Ren-Tanaka Combination Would have
`been Unworkable, Would have Addressed
`No Deficiency, and Would have Provided No
`Benefit to Tanaka ............................................................ 15
`i.
`Ren’s Slide Off Strategy ........................................ 15
`ii.
`Ren’s Stationary Targets ....................................... 19
`A Ren-Tanaka Combination Would Require
`Significant Alteration in Either Ren or
`Tanaka ............................................................................. 21
`Implementing a Single Activation Technique
`Would have Undermined the Purpose of
`Tanaka ............................................................................. 23
`Petitioners’ Purported Bases for Motivation
`to Combine are Conclusory, Improper and
`Inaccurate ........................................................................ 23
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`b.
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`c.
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`d.
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`e.
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`
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`ii
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`2)
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`Petitioners’ Generalized Assertions of
`Motivation to Combine are Insufficient
`and Incorrect ......................................................... 23
`1)
`“Solutions to the Same
`Problem” is Insufficient............................. 24
`Ren’s Slide Off Strategy Would
`Not have been Obvious to Try
`with Tanaka ............................................... 24
`Petitioners’ Generalized
`Assertions are Insufficient ......................... 26
`Bederson’s Additional Arguments, Not
`Referenced in the Petition, Are
`Improper as well as Misdirected and
`Inaccurate .............................................................. 27
`Petitioners’ Generalized Assertions of Motivation
`to Incorporate Ren’s “Selection Targets” into
`Tanaka’s Device Would Not Result in the Claimed
`Invention ................................................................................... 35
`Grounds 1B-E: Petitioners Fail to Satisfy their
`Burden with Respect to Claims 2-6 and 12-17 ........................ 36
`Grounds 2A – 2D: Petitioners Fail to Show that Claim 1 is
`Obvious Over the Combination of Ren and Hirayama307 ........................... 36
`1.
`A POSA Would Not have been Motivated to
`Modify Hirayama307 to Produce Limitation 1[d] ................... 37
`A POSA Would Not have been Motivated to
`Incorporate the a→c→b→a Variant of Ren’s Slide
`Off Target Selection Strategy into Hirayama307 ..................... 43
`a.
`Petitioners’ Generalized Assertions regarding
`Motivation to Combine Fail to Satisfy Their
`Burden ............................................................................. 43
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`2.
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`3.
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`2.
`
`B.
`
`IPR2021-00144
`Preliminary Response
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`i.
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`ii.
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`3)
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`iii
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`b.
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`c.
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`3.
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`b.
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`C.
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`Ren Teaches Away from the Slide Off
`Strategy ............................................................................ 47
`A Ren-Hirayama307 Combination Would
`have Addressed No Deficiency in
`Hirayama307, and the Detriments Would
`have Outweighed Any Benefits ....................................... 48
`Grounds 2B-D: Petitioners Fail to Satisfy their
`Burden with Respect to Claims 2-6 and 12-17 ........................ 50
`Ground 3: Petitioners Fail to Show that Claims 1, 14 and 15
`are Obvious over Jermyn .............................................................................. 50
`1.
`Jermyn is Not Analogous Art ................................................... 50
`a.
`Jermyn is Not in the Same Field of Endeavor
`as the ’879 Patent ............................................................ 51
`Jermyn is Not Reasonably Pertinent to the
`Problems Addressed by the ’879 Patent .......................... 53
`Jermyn Does Not Disclose Limitation 1[a] .............................. 56
`1.
`Jermyn Does Not Disclose Limitation 1[b].............................. 66
`2.
`Jermyn Does Not Disclose Limitation 1[c] .............................. 70
`3.
`Claims 14-15 are Not Obvious over Jermyn ............................ 71
`4.
`CONCLUSION ....................................................................................................... 71
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`Preliminary Response
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`iv
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`TABLE OF AUTHORITIES
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`CASES
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`IPR2021-00144
`Preliminary Response
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`Page(s)
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`Adidas AG v. Nike, Inc.,
`963 F.3d 1355 (Fed. Cir. 2020) .............................................................. 22, 23, 27
`Apple Inc. v. Voip-Pal.com, Inc.,
`976 F.3d 1316 (Fed. Cir. 2020) .................................................................... 19, 27
`Arctic Cat Inc. v. Polaris Indus., Inc.,
`795 Fed. Appx. 827 (Fed. Cir. 2019) ................................................................. 19
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) ...................................... 28, 56
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) ............................................................................ 54
`Dynamic Drinkware, LLC v. National Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .................................................................... 50, 51
`Fluor Tec, Corp. v. Kappos,
`499 Fed. Appx. 35 (Fed. Cir. 2012) ................................................................... 15
`Henny Penny Corp. v. Frymaster LLC,
`938 F.3d 1324 (Fed. Cir. 2019) .......................................................................... 19
`In re Klein,
`647 F.3d 1343 (Fed. Cir. 2011) .................................................................... 50, 55
`Microsoft Corp. v. Enfish, LLC,
`662 Fed.Appx. 981 (Fed. Cir. 2016) ............................................................ 24, 43
`Personal Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ........................................................................ 4, 27
`Polaris Indus., Inc. v. Arctic Cat, Inc.,
`882 F.3d 1056 (Fed. Cir. 2018) .......................................................................... 14
`
`v
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`
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`IPR2021-00144
`Preliminary Response
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`Polygroup Ltd. MCO v. Willis Elec. Co.,
`759 Fed. Appx. 934 (Fed. Cir. 2019) ................................................................. 50
`Rolls-Royce, PLC v. United Techs. Corp.,
`603 F.3d 1325 (Fed. Cir. 2010) .......................................................................... 26
`Securus Techs., Inc. v. Global Tel*Link Corp.,
`701 Fed.Appx. 971 (Fed. Cir. 2017) ...................................................... 24, 27, 43
`Smith & Nephew, Inc. v. Hologic, Inc.,
`721 Fed. Appx. 943 (Fed. Cir. 2018) ................................................................. 54
`St. Jude Med., LLC v. Snyders Heart Valve LLC,
`977 F.3d 1232 (Fed. Cir. 2020) ............................................................................ 3
`OTHER AUTHORITIES
`37 C.F.R. § 42.6(a)(3) ............................................................................................. 28
`37 C.F.R. § 42.24(a)(1) ........................................................................................... 73
`37 C.F.R. § 42.24(d) ................................................................................................ 73
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`vi
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`NEO
`Exhibit
`Number
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`2001
`2002
`2003
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`IPR2021-00144
`Preliminary Response
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`TABLE OF EXHIBITS
`Description
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`Declaration of Craig Rosenberg, Ph.D.
`CV of Craig Rosenberg, Ph.D.
`Microsoft Press Computer Dictionary, p. 243 (3d ed. 1997).
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`vii
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`INTRODUCTION
`Petitioners assert that claims 1-6 and 12-17 of U.S. Patent No. 8,095,879
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`IPR2021-00144
`Preliminary Response
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`I.
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`(“the ’879 Patent”) are unpatentable as obvious on three grounds. They bear the
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`burden of proving their case. They fail to do so.
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`First, Petitioners contend that claim 1 is obvious over two combinations:
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`Ren-Tanaka, and Ren-Hirayama307. Petitioners assert that a POSA would have
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`been motivated to incorporate a subset of one of the six target selection strategies
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`discussed in Ren – the a→c→b→a variant of Ren’s Slide Off target selection
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`strategy – into the devices of Tanaka and Hirayama307. However, Petitioners fail
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`to proffer any explanation rooted in evidence as to why a POSA would have been
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`motivated to incorporate this particular selection strategy into either Tanaka or
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`Hirayame307. In fact, a POSA would not have been motivated to make their
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`proposed combinations, because:
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`• Ren teaches away from Petitioners’ Slide Off strategy, concluding that
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`a different selection strategy is preferred and expressly denigrating the
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`Slide Off strategy. Indeed, Ren does so with particular force with
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`respect to displays of the type used in both Tanaka and Hirayama307;
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`• A POSA would have seen no deficiency in either Tanaka or
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`Hirayama307 would have been remedied by Ren, and Petitioners’
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`1
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`
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`proposed combinations would have provided no benefit in exchange
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`IPR2021-00144
`Preliminary Response
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`for substantial detriments; and
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`• Petitioners’ proposed Ren-Tanaka combination would have required
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`substantial alteration of either Ren or Tanaka.
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`Rather than grapple with Ren’s contrary teachings and the failings of their
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`specific proposed combination, Petitioners offer little more than conclusory
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`assertions that are facially insufficient and in some cases untrue – e.g., that Ren’s
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`selection strategies were “well known” and “obvious to try” when Ren itself as
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`well as the evidence of record makes clear that at least three of them, including the
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`Petitioners’ preferred Slide Off strategy, were recent innovations by Ren and were
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`not common icon selection strategies at the time. And what little more they do
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`offer is procedurally improper (consisting of argument by their expert going
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`beyond what is contained in the Petition) as well as misdirected or categorically
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`false – e.g., that Tanaka does not teach dragging an icon when Tanaka expressly
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`states that the icon is dragged in at least ten passages in the patent. Petitioners
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`therefore fail to satisfy their burden to prove any motivation to combine Ren with
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`either Tanaka or Hirayama307, or to modify Hirayama307 along similar lines.
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`Second, Petitioners contend that claim 1 is obvious over Jermyn. However,
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`Jermyn is not analogous art – it is an article proposing a graphical password
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`scheme, having nothing to do with the ’879 Patent’s concern with providing an
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`2
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`
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`easily navigable user interface for a small handheld computer unit. Moreover,
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`IPR2021-00144
`Preliminary Response
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`even if Jermyn were analogous, they would still fail to carry their burden of
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`proving that Jermyn discloses several elements of claim 1 because (i) Jermyn’s
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`password entry grid is just a field for entry of a password and not a “representation
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`of a function,” (ii) Jermyn’s grid does not “consist[] of only one option for
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`activating the function,” and (iii) the user’s pen in Jermyn does not touch the
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`display to begin a tap or stroke “at a location where the representation is provided.”
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`Accordingly, Petitioners fail to carry their burden with respect to claim 1
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`and, therefore, all of the dependent claims as well. The Board should therefore
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`deny institution.
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`II. PETITIONERS HAVE FAILED TO SHOW THAT ANY CLAIM IS
`UNPATENTABLE
`A. Grounds 1A – 1E: Petitioners Fail to Show that Claim 1 is Obvious
`Over the Combination of Ren and Tanaka
`1. A POSA Would Not have been Motivated to Incorporate the
`a→c→b→a Variant of Ren’s Slide Off Target Selection Strategy into
`Tanaka
`Petitioners bear the burden of proving that a POSA would have been
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`motivated to make their proposed combination. St. Jude Med., LLC v. Snyders
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`Heart Valve LLC, 977 F.3d 1232, 1242 (Fed. Cir. 2020). They fail to meet that
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`burden.
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`3
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`
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`Petitioners’ Ground 1 rests on Tanaka as a primary reference, with Ren as a
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`IPR2021-00144
`Preliminary Response
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`secondary reference. While they refer generally to a variety of reasons why a
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`POSA would have been motivated to incorporate Ren’s “selection targets” or
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`“selection techniques” into Tanaka’s device, they rely on only one of these
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`selection techniques to purportedly satisfy limitations 1[c] and 1[d]: the
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`a→c→b→a variant of Ren’s Slide Off target selection strategy. Pet., 29-31. So, in
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`order to meet their burden, they must explain why and how a POSA would have
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`been motivated to incorporate that element of Ren into Tanaka’s device. Personal
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`Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993-94 (Fed. Cir. 2017). They fail
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`to do so; in fact, a POSA would not have been motivated to incorporate Ren’s
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`Slide Off strategy into Tanaka, for several independent reasons.
`
`a.
`Ren Teaches Away from the Slide Off Strategy
`First, Ren taught away from the Slide Off strategy for use with mobile
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`handheld devices, concluding that a different strategy – Slide Touch – was superior
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`to Slide Off and all of the other strategies disclosed in the article for such devices.
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`EX2001, ¶ 40; EX1004, 384, 402-03, 409, 412. In fact, Ren denigrated the Slide
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`Off strategy with particular force when used with mobile handheld devices with a
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`dense display. EX2001, ¶40; EX1004, 403. This is exactly the type of display
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`taught by Tanaka, the reference into which they seek to incorporate Ren’s Slide Off
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`strategy. EX2001, ¶¶55-57; EX1005, Figs. 1, 5.
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`4
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`
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`Ren disclosed two experiments comparing six different pen-based strategies
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`IPR2021-00144
`Preliminary Response
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`for selecting targets on a touchscreen. EX1004, p. 384. Ren repeatedly stated its
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`conclusion, beginning with the Abstract:
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`We determined the best strategy of the six to be the “Slide Touch” strategy,
`where the target is selected at the moment the pen-tip touches the target for
`the first time after landing on the screen surface.
`EX1004, p. 384.
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`The Slide Touch strategy, in which a target was selected “when the pen
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`touches it for the first time,” EX1004, 390, was essentially the opposite of the Slide
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`Off strategy, in which “the selection is made when the pen is removed from any
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`point on the screen either inside or outside the target area.” EX1004, 391. The
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`two strategies (Slide Touch and Slide Off), of the six illustrated in Ren’s Figure 3,
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`are highlighted below:
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`5
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`IPR2021-00144
`Preliminary Response
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`EX1004, 390, Fig. 3.1
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`Two experiments were run using a portable Wacom touchscreen/display
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`linked to an NEC PC. EX1004, p. 393. The results were unambiguous. With
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`respect to mean selection time, the Slide Touch strategy was the clear winner, with
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`Slide Off coming in a distant third:
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`1 Ren’s three “In-Out” strategies appear to include operations defining the separately-
`evaluated “In” strategies, and would to that extent have been considered to be ambiguous and
`confusing by a POSA. A POSA would likely have interpreted the data and conclusions provided
`in Ren for the three “In-Out” strategies as excluding data and conclusions for other
`“incorporated” strategies, i.e., Direct On, Direct Off, and Space On, because this would have
`been the most logical way of resolving this ambiguity. EX2001, ¶¶ 46-47.
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`6
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`IPR2021-00144
`Preliminary Response
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`EX1004, 395-96.
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`The Slide Off strategy, again, came in third place with respect to mean error
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`rate, although the difference among the top three was not statistically significant:
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`7
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`IPR2021-00144
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`EX1004, 397-98.
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`
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`Accordingly, in the first experiment Ren concluded that:
`Best Selection Strategies. The results showed that the Slide Touch strategy
`was the best of the six, in terms of selection time (Figure 5), error rate
`(Figure 6), and subject preference (Figure 9). The analyses showed that the
`Slide Touch strategy had a lower error rate, and was faster than the Direct
`Off and Space On strategies. There was no significant difference in selection
`time between the Slide Touch strategy and the Direct On strategy, but the
`Slide Touch strategy had a lower error rate than the Direct On strategy. No
`significant differences were found in error rate between the Slide Touch and
`either the Slide Off or Space Touch strategies, but the Slide Touch strategy
`was faster than both of them (see Table II). Thus, the Slide Touch strategy
`was significantly better overall than the other individual strategies. An
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`8
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`IPR2021-00144
`Preliminary Response
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`analysis of subject preferences also showed that the Slide Touch strategy was
`the most preferred (large targets, mean = 4.75, small targets, mean = 3.08).
`EX1004, 402-03 (emphasis added).
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`In Ren’s second experiment, he added two additional target sizes to the three
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`provided in the first experiment. Here again, Petitioners’ Slide Off strategy
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`performed very poorly, showing fifth worst (out of six) for mean selection time
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`and third best for mean error rates. EX1004, 397-98, Figs. 11-12. Ren concluded,
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`for experiment two:
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`Since each of the Slide Touch, Slide Off, and Space Touch strategies had
`lower error rates than each of the Direct On and Space On strategies, and
`since the Direct On was faster than the Direct Off strategy, we concluded
`that the Slide Touch, Slide Off, and Space Touch are better than the other
`three strategies. However, according to Experiment One the Slide Touch is
`better than the other five strategies.
`EX1004, 409.
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`Ren’s overall conclusion was clear:
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`4.4.2 The Best Individual Strategy and Best Strategy Group. The Slide
`Touch strategy is the best of the individual strategies. When the results for
`Experiment One and Experiment Two were compared in simple pairs we
`found that the Slide Touch Strategy was the best strategy [Ren and Moriya
`1997b; 1999]. The post hoc Tukey HSD test showed that, in Experiment
`One, the Slide Touch was indeed the best strategy.
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`9
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`
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`EX1004, 412. In sum: Ren taught away from the use of the Slide Off strategy for
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`IPR2021-00144
`Preliminary Response
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`target selection on mobile devices. EX2001, ¶¶40, 59.
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`Moreover, Ren’s teaching was particularly pointed with respect to the use of
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`the “In-Out” strategies (including both Slide Off and Slide Touch) on what Ren
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`characterized as “dense displays.” Ren stated that while the In-Out group could be
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`used “in situations where other targets do not exist near the target, or in situations
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`where targets are not too close together, or where other targets do not exist near
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`one side of the target (e.g., the upper part),” the In-Out group “would not be
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`efficient in dense displays.” EX1004, 403.
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`Yet that is exactly the type of display presented in Tanaka. EX2001, ¶57.
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`For example, in Tanaka’s Figure 1, to which Petitioners point to support their
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`assertions, icons exist near other icons, the icons are close together, and the icons
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`exist near the sides of the target, such as the upper and right sides of the display:
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`10
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`Preliminary Response
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`EX1005, Fig. 1.
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`And the display of the actual Tanaka invention is even worse as far as the
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`density of the Tanaka display and the proximity to all four sides as seen in Figure 5
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`below:
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`11
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`Preliminary Response
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`EX1005, Fig. 5.
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`Figures 1 and 5 of Tanaka illustrate the types of dense displays, with many
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`icons packed closely together, that Ren states would be particularly unsuited for
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`the Slide Off strategy. EX2001, ¶57; EX1004, 403. There is no embodiment
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`disclosed in Tanaka that appears to fit the narrow criteria articulated in Ren for
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`“more efficient” implementation of the Slide Off strategy. EX2001, ¶57.
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`Accordingly, a POSA would have understood that Ren teaches away, with
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`12
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`particular force, from the use of the Slide Off strategy in the device of Tanaka.
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`EX2001, ¶¶40, 59.
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`Petitioners assert that “Ren teaches the Slide Off strategy is desirable
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`‘because selection does not depend on the point of removal from the screen,’ and
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`‘[t]herefore the pen may pass through the target which will not be selected until the
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`pen is removed from any point on the screen.’” Pet., 27-28. This assertion is false.
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`As shown above, Ren did not teach that the Slide Off strategy is desirable; to the
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`contrary, Ren taught that the Slide Touch strategy is the best, and taught away from
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`Slide Off with particular force as applied to dense displays of the type used in
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`Tanaka. Petitioners’ assertion here is particularly egregious in light of the fact that
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`in their co-pending IPR2021-00145, they and Bederson acknowledge the falsity of
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`their position here, stating: “Ren also teaches the desirability of using the tap or
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`Direct Off technique, for example, in dense displays where targets are close
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`together.” Apple, Inc. et al. v. Neonode Smartphone LLC, IPR2021-00145, Paper 1
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`at 38 (PTAB Nov. 6, 2020). Moreover, the text to which they cite is lifted from the
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`paragraph in Ren addressing “situations where other targets do not exist near the
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`target, or . . . where targets are not too close together, or where other targets do not
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`exist near one side of the target (e.g., the upper part).” EX1004, p. 403. In other
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`words, the opposite of Tanaka’s display.
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`13
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`In addition, Petitioners omit a key clause from their quotation, which is set
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`IPR2021-00144
`Preliminary Response
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`out in full with the omitted portion underlined:
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`In this situation [i.e., of sparse displays], the Slide Off strategy can be used
`because selection does not depend on the point of removal from the screen,
`and the last target highlighted will be selected. Therefore, the pen may pass
`through the target which will not be selected until the pen is removed from
`any point on the screen.
`EX1004, p. 403 (emphasis added). As explained below, the fact that in Ren’s Slide
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`Off strategy the last-touched target is the one that is activated upon lifting the pen
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`from the display renders this strategy ill-suited for combination with the interface
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`of Tanaka. EX2001, ¶58.
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`“A reference may be said to teach away when a person of ordinary skill,
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`upon reading the reference, would be discouraged from following the path set out
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`in the reference, or would be led in a direction divergent from the path that was
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`taken by the applicant.” Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056,
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`1069 (Fed. Cir. 2018) (internal quotes omitted). Moreover, “even if a reference is
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`not found to teach away, its statements regarding preferences are relevant to a
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`finding regarding whether a skilled artisan would be motivated to combine that
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`reference with another reference.” Id.
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`For at least the reasons set forth above, a POSA would have understood
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`from the teaching of Ren that the Slide Off teaching of Ren would have been
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`14
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`
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`undesirable within the context of the user interface used by Tanaka. He would
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`IPR2021-00144
`Preliminary Response
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`have been led by Ren to favor the Direct On or Direct Off strategies for Tanaka’s
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`dense display, or at the very least to favor Slide Touch rather than Slide Off if using
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`one of the In-Out strategies. To whatever extent a POSA would have found Ren
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`relevant to Tanaka, he would not have seen any motivation to use the multiply-
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`denigrated Slide Off strategy in the dense display of Tanaka. EX2001, ¶59. Ren,
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`therefore, taught away from Petitioners’ proposed incorporation of Slide Off into
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`Tanaka, undermining any motivation to combine. Fluor Tec, Corp. v. Kappos, 499
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`Fed. Appx. 35, 42 (Fed. Cir. 2012).
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`b.
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`The Ren-Tanaka Combination Would have been Unworkable,
`Would have Addressed No Deficiency, and Would have Provided
`No Benefit to Tanaka
`i. Ren’s Slide Off Strategy
`Second, a POSA would have understood that Ren’s Slide Off strategy would
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`have been poorly suited for combination with the interface of Tanaka. EX2001, ¶
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`60.
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`Ren’s Slide Off strategy activates the last “target” touched by the pen prior to
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`liftoff from the display. EX2001, ¶61; EX1004, 391, 403. Thus, as explained by
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`Ren, it would not be efficient for use on dense displays; this is so because in
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`dragging the pen across a screen filled with other icons the user would likely cause
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`an icon different from the one at which the dragging motion commenced to be
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`15
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`activated upon liftoff from the display. EX2001, ¶61. That is exactly what would
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`happen with Tanaka’s Figure 1; multiple icons in the top and far right of the
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`display would be blocked by icons located inward on the display over which the
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`pen would have to drag in order to reach the working area of the display:
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`EX1005, Fig. 1.
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`Tanaka’s preferred embodiment would also suffer from this problem –
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`indeed, it is difficult to see how an icon could be activated at all using Ren’s Slide
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`Off strategy, since a movement away from nearly any icon in nearly any direction
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`would likely intersect with another icon, thereby ensuring that the last-touched
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`icon, and not the first, was activated upon the user lifting the pen from the display:
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`EX2001, ¶62; EX1005, Fig. 5. This is so because, as noted above, Ren’s Slide Off
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`strategy activates the last “target” touched by the pen prior to liftoff from the
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`display. EX2001, ¶62; EX1004, 391, 403.
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`Petitioners assert that a POSA would have been motivated to implement the
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`Slide Off strategy exclusive of the Direct Off strategy on “pocket-sized pen-based
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`applications with small targets,” rather than both for the same target, because the
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`Slide Off strategy scored better in two metrics than did the Direct Off strategy.
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`17
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`Pet., 28. However, to a POSA evaluating how to efficiently present information
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`and activatable icons on a display of a mobile handheld device in 2002, the
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`question of whether Direct Off was superior to Slide Off, or whether to attempt to
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`implement one as opposed to both of these strategies for a target, would not have
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`been considered to be productive inquiries within the context of the dense display
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`of Tanaka, because an entirely different strategy – Slide Touch – was identified as
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`the overall optimal strategy and strategies such as Slide Off were (and were taught
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`by Ren to be) particularly unsuitable for dense displays. EX2001, ¶63. Therefore,
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`the teaching of Ren to which Petitioners point would have provided no motivation
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`to combine.
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`While resulting in significant detriments to Tanaka, as outlined above,
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`incorporating the Slide Off strategy into Tanaka would not have been seen as
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`offering any countervailing benefit. EX2001, ¶64. Tanaka’s “check” and drag and
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`drop icon selection techniques were well-known and well-accepted in the field of
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`user interface design in 2002. Id. A POSA would have been familiar with both of
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`them, and would have understood that users were familiar with both of them. Id.
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`There was no general belief in the field of user interface design that these two icon
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`selection techniques would have been deficient for the purposes for which they
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`were used in Tanaka, or that there was a need to develop additional means of user
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`interaction with an interface of a mobile computer unit. Id. Accordingly, a POSA
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`would not have seen Tanaka’s icon selection techniques as ripe for further
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`development. Id. So, for this reason as well, a POSA would not have been
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`motivated to incorporate Ren’s Slide Off strategy into the display of Tanaka. Id.
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`The prior art should be considered for all of its teachings, and “[t]he
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`benefits, both lost and gained, should be weighed against one another.” Henny
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`Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1331-32 (Fed. Cir. 2019)
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`(emphasis in original). Here, the benefits lost via Petitioners’ combination clearly
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`outweigh those gained. This further undermines any motivation to combine.
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`Apple Inc. v. Voip-Pal.com, Inc., 976 F.3d 1316, 1325 (Fed. Cir. 2020); Arctic Cat
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`Inc. v. Polaris Indus., Inc., 795 Fed. Appx. 827, 832-34 (Fed. Cir. 2019).
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`ii. Ren’s Stationary Targets
`Petitioners assert that a POSA would understand that duplicating or
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`relocating the target during gliding would fail to achieve the operation of Ren’s
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`a→c→b→a Slide Off variant. Pet., 31. Petitioners never explain why a POSA
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`would want to graft Ren’s a→c→b→a Slide Off variant into Tanaka in the first
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`place. In fact, a POSA would not have done so, for several reasons.
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`First, a POSA would have seen no reason to substitute Ren’s stationary
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`targets for the icons of Tanaka, because the stationary nature of Ren’s targets
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`would have detracted from the utility of Tanaka’s drag and drop functionality. As
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`explained by Tanaka, the “dragging” operation enables a user to designate where
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`on the display a new window will open. EX1005, col. 4:52-54; 5:9-28; 6:55-60;
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`Fig. 4 [101, 103, 104]. Eliminating the presentation of a “dragged icon” while the
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`user’s finger or pointing device glided along the display away from a touched icon
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`would not have improved the user experience or functioning of Tanaka’s device in
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`any way and would likely have degraded the user experience. EX2001, ¶75.
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`There was no deficiency in the user experience or functioning of Tanaka’s
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`device that would have been remedied by the removal of the “dragged icon”
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`presentation. Id. To the contrary, removing the “dragged icon” presentation would
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`have been detrimental to the user experience, making it more difficult for a user to
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`quickly and easily identify where on the display an associated window would be
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`likely to open. Id.
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`In addition, given the ubiquity of the “drag and drop” operation in computer
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`user interfaces in 2002, it would have been considered odd by a POSA to have
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`modified Tanaka’s device to eliminate it. EX2001, ¶76.
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`Accordingly, modifying the references as Petitioners suggest would have
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`introduced a detriment to Tanaka for no offsetting benefit. EX2001, ¶77.
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`And, Ren provides no motivation to substitute its stationary targets for the
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`icons of Tanaka, for at least the reason that Ren’s stationary targets are explicitly
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`intended for an experimental design to test different selection strategies; while the
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`purpose of the experiments was to develop data and conclusions concerning
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`optimal target selection strategies, the use of stationary targets across all of the
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`strategies would have been understood as intended to provide a controlled and
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`bias-free environment in which to conduct the experiment rather than as a means of
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`optimizing user interactions with an interface. EX2001, ¶78. In other words, to a
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`POSA, regardless of whether Ren taught that an interface could be coded to
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`present such a display (presenting, e.g., stationary targets randomly relocated upon
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`each use), Ren did not teach that an interface should be coded to present such a
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`display. EX2001, ¶79.
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`Moreover, Petitioners’ own arguments and evidence support this conclusion.
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`Petitioners (and Dr. Bederson) characterize Ren’s Direct Off strategy as similar to
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`Tanaka’s “check” technique, and Ren’s Slide Off strategy (the a→c→b→a variant)
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`as similar to Tanaka’s drag and drop technique. Pet., 24; EX1002, ¶100.
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`Petitioners d
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