`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., AND APPLE, INC.,
`Petitioner,
`
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`____________
`
`Case IPR2021-00144
`Patent 8,095,879
`____________
`
`
`
`CORRECTED PATENT OWNER RESPONSE
`
`
`
`
`
`
`EXHIBIT 1048
`Samsung et al. v. Neonode
`IPR2021-00144
`
`1
`
`

`

`
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`B.
`
`B.
`
`INTRODUCTION ...........................................................................................1
`SECONDARY INDICIA OVERWHELMINGLY SUPPORTS A FINDING
`OF VALIDITY. ...............................................................................................3
`A. Neonode’s Innovative Swiping User Interface, Years Ahead Of
`Apple’s And Samsung’s Offerings, Received Substantial Industry
`Praise And Is The Subject Of The ’879’s Claims. ................................ 5
`The Commercial Success And Licensing Of The Neonode
`Technology Further Demonstrates The Novelty Of The Claims. ....... 17
`III. THE PETITION FAILS FOR TWO INDEPENDENTLY SUFFICIENT
`REASONS. ....................................................................................................19
`The Claimed “Gliding … Away From The Touched Location” Is A
`A.
`Different Gesture From Hirayama-307’s Drag-And-Drop. ................ 19
`The Prosecution History, Consistent With Plain Meaning And
`1.
`The Specification, Makes Clear That “Gliding … Away” Does
`Not Encompass “Drag-And-Drop” Operations. ...................... 20
`Hirayama-307’s “Drag-And-Drop” Operation Does Not
`Disclose The “Gliding … Away” Limitation. ......................... 26
`Petitioner’s Expert Testimony That Hirayama-307’s Drag-And-
`Drop Gesture Discloses The Claimed “Gliding … Away” Is
`Conclusory And Entitled To Little Or No Weight. ................. 31
`Petitioners’ Ground Fails To Disclose Or Render Obvious
`“Wherein The Representation Of The Function Is Not Relocated Or
`Duplicated.” ........................................................................................ 34
`1.
`Petitioner’s Single-Reference Obviousness Argument Fails. .. 35
`Petitioner’s Single-Reference Obviousness Argument Is
`a.
`Based On The False Premise That Hirayama-307 Does
`Not “Relocate[] Or Duplicate[]” The Representation Of
`Function. .........................................................................35
`The Petition Provides No Reason Why A POSITA
`Would Modify Hirayama-307. .......................................46
`A POSITA Would Not Have Been Motivated To Modify
`Hirayama-307 In View Of Ren So That The Representation Of
`The Function “Is Not Relocated Or Duplicated.” .................... 51
`
`2.
`
`3.
`
`b.
`
`2.
`
` i
`
`2
`
`

`

`
`
`IV. CLAIM 6 IS NOT SHOWN TO BE UNPATENTABLE. ...........................61
`V.
`CLAIM 15 IS NOT SHOWN TO BE UNPATENTABLE. .........................64
`VI. CONCLUSION .............................................................................................68
`
`
` ii
`
`3
`
`

`

`
`
`
`COURT DECISIONS
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Ajinomoto Co. v. ITC,
`932 F.3d 1342 (Fed. Cir. 2019) .....................................................................20
`
`Apple Inc. v. Samsung Elecs. Co. Ltd.,
`839 F.3d 1034 (Fed. Cir. 2016) (en banc) .....................................................14
`
`Cheese Sys. v. Tetra Pak Cheese & Powder Sys.,
`725 F.3d 1341 (Fed. Cir. 2013) .......................................................................4
`
`Comcast Cable Communs., LLC v. Promptu Sys. Corp.,
`838 F. App’x 551 (Fed. Cir. 2021) ................................................................50
`
`D’Agostino v. Mastercard Int’l, Inc.,
`844 F.3d 945 (Fed. Cir. 2016) .......................................................................65
`
`Fenner Invs., Ltd. v. Cellco P’ship,
`778 F.3d 1320 (Fed. Cir. 2015) .....................................................................65
`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.,
`676 F.3d 1063 (Fed. Cir. 2012) .....................................................................52
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ...............................................................68, 70
`
`In re Oelrich,
`666 F.2d 578 (C.C.P.A. 1981) ......................................................................70
`
`Institut Pasteur v. Focarino,
`738 F.3d 1337 (Fed. Cir. 2013) .................................................................4, 14
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge, Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .....................................................................68
`
`Iridescent Networks, Inc. v. AT&T Mobility, LLC,
`933 F.3d 1345 (Fed. Cir. 2019) .....................................................................20
`
` iii
`
`4
`
`

`

`
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .....................................................................52
`
`Microsoft Corp. v. Enfish, LLC,
`662 Fed. App’x 981 (Fed. Cir. 2016) ............................................................50
`
`PAR Pharm. v. TWi Pharms., Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) .....................................................................70
`
`Phillips v. AWH Corp.,
`415 F.3d 1303, (Fed. Cir. 2005) ....................................................................30
`
`Saffran v. Johnson & Johnson,
`712 F.3d 549 (Fed. Cir. 2013) .......................................................................19
`
`Spectrum Int’l, Inc. v. Sterilite Corp.,
`164 F.3d 1372 (Fed. Cir. 1998) .....................................................................19
`
`
`
`AGENCY DECISIONS
`
`Ford Motor Co. v. TMC Fuel Injection Sys., LLC,
`IPR2014-00272, Paper 36 (June 22, 2015) ...................................................19
`
`Ford Motor Co. v. TMC Fuel Injection Sys., LLC,
`IPR2014-00273, Paper 15 (June 22, 2015) ...................................................19
`
`Ford Motor Co. v. Vehicle Operation Techs., LLC,
`IPR2014-00594, Paper 26 (Oct. 15, 2014) ....................................................19
`
`Google Inc. v. Koninklijke Philips N.V.,
`IPR2017-00409, Paper 10 (June 5, 2017) .....................................................30
`
`Hulu LLC v. DivX LLC,
`IPR2021-01418, Paper 15 (Mar. 15, 2022) .............................................18, 19
`
`Hulu LLC v. Sound View Innovations,
`IPR2018-00582, Paper 34 (Aug. 5, 2019) .....................................................52
`
` iv
`
`5
`
`

`

`
`
`InfoBionic, Inc. v. Braemer Mfg., LLC,
`IPR2015-01704, Paper 11 (Feb. 16, 2016) ...................................................52
`
`William Wesley Carnes, Sr., Inc. v. Seabord Int’l Inc.,
`IPR2019-00133, Paper 10 (May 8, 2019) .....................................................51
`
`
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.104(b)(3) ..........................................................................................64
`
`37 C.F.R. § 42.65 .....................................................................................................30
`
`
`
`
`
`
`
` v
`
`6
`
`

`

`
`
`EXHIBIT LIST
`
`2001
`
`Declaration of Craig Rosenberg, Ph.D. [Rosenberg-Decl.]
`
`2002
`
`CV of Craig Rosenberg, Ph.D. [Rosenberg CV]
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`Microsoft Press Computer Dictionary, p. 243 (3d ed. 1997)
`[Microsoft-Dictionary]
`
`Declaration of Nathan Lowenstein in Support of Motion for Pro
`Hac Vice Admission [Lowenstein-Decl.]
`
`Deposition Transcript of Petitioner’s Expert, Benjamin B
`Bederson, Feb. 28, 2022 [Bederson-Depo.]
`
`Amy K. Karlson, Benjamin B. Bederson, and John SanGiovanni,
`Applens And Launchtile: Two Designs For One-Handed Thumb
`Use On Small Devices, CHI 2005 ׀ PAPERS: Small Devices 1
`[Bederson-Paper]
`
`Second Declaration of Craig Rosenberg, Ph.D. [Rosenberg-2nd-
`Decl.]
`
`N2 Advertisement Video (uploaded Oct. 18, 2007) (available at
`https://www.youtube.com/watch?v=Hq3S8Crxf2s) [N2-
`Advertisement-Video]
`
`Non-Final Rejection of Application No. 10/315,250 (later issued
`as U.S. Patent 8,095,879), mailed Mar. 23, 2006. [2006-03-23
`Non-Final Rejection]
`
`2010
`
`U.S. Publication No. 2004/0021643 [Hoshino]
`
`2011
`
`Reserved
`
`2012
`
`Conrad H. Blickenstorfer, NeoNode N1, Can A Unique Interface
`Put This Compelling Smart Phone On The Map? Pen Computing
`Magazine [Pen-Computing-Magazine-N1-Phone-Review]
`
` vi
`
`7
`
`

`

`
`
`2013
`
`2014
`
`Conrad H. Blickenstorfer, Neonode N2, A New Version Of The
`Phone That Pioneered Touchscreens, Pen Computing Magazine,
`Nov. 4, 2007 [Pen-Computing-Magazine-N2-Phone-Review]
`
`Bill Hennessy, The Neonode N2, Trend Hunter, Aug. 18, 2008
`[Trend-Hunter-Article]
`
`2015
`
`Trend Hunter, About page [Trend-Hunter-About]
`
`2016
`
`Neonode N1m First Impression [tnkgrl-Media-post]
`
`2017
`
`Tnkgrl About Page [tnkgrl-Media-About]
`
`2018
`
`2019
`
`Jurek Breuninger PhD Dissertation, Nov. 13, 2019 [PhD-
`Dissertation]
`
`Timothy B. Lee, If Android Is A “Stolen Product,” Then So Was
`The Iphone, Ars Technica, Feb. 23, 2012 [Ars-Technica-Article]
`
`2020
`
`Andreas Hollatz Dissertation, Oct. 2015 [Hollatz-Dissertation]
`
`2021
`
`Hunting The iPhone Killer; Swedish Neonode Generates Buzz For
`Device, RCR Wireless, Apr. 7, 2007 [iPhone-Killer]
`
`2022
`
`Declaration of Ulf Martensson [Martensson-Decl.]
`
`2023
`
`Declaration of Joseph Shain [Shain-Decl.]
`
`2024
`
`Declaration of Marcus Backlund [Backlund-Decl.]
`
`2025
`
`Excel Spreadsheet documenting Neonode sales [Neonode-Sales]
`
`2026
`
`CONFIDENTIAL Declaration of Per Bystedt [Bystedt-Decl.]
`
`2027
`
`Neonode Confidential Investment Memorandum, Jan. 2004
`[Neonode-Investment-Memo]
`
` vii
`
`8
`
`

`

`
`
`2028
`
`2029
`
`2030
`
`2031
`
`2032
`
`2033
`
`2034
`
`2035
`
`2036
`
`CONFIDENTIAL Samsung License Agreement [Samsung-
`License-Agreement]
`
`Neonode N1m review, Jun. 29, 2007 (available at
`https://www.youtube.com/watch?v=Tj-KS2kfIr0) [Neonode-N1m-
`review]
`
`User Online Comments of Neonode N2 instructions film
`[Neonode-Comments-1]
`
`User Online Comments of Neonode N2 Overview [Neonode-
`Comments-2]
`
`User Online Comments of Neonode N2 unbox and review video
`[Neonode-Comments-3]
`
`Wikipedia – Apple iPhone release dates [Wikipedia-iPhone-
`Release-Dates]
`
`Wikipedia – Samsung Galaxy release dates [Wikipedia-Samsung
`Galaxy-Release-Dates]
`
`Response to Non-Final Office Action of Application No.
`10/315,250 (later issued as U.S. Patent 8,095,879), submitted Mar.
`14, 2008. [2008-03-14 Office-Action-Response]
`
`Neonode the only original, Sep. 13, 2007 (available at
`https://www.youtube.com/watch?v=D9N3H1rSxHk) [User-Video]
`
`2037
`
`Email by the Board, Feb. 25, 2022 [Board-Email]
`
`2038
`
`IEEE Dictionary Definition of “Shell” [IEEE Dictionary]
`
`2039
`
`2040
`
`US Inflation Calculator (available at
`https://www.usinflationcalculator.com/) [Inflation-Calculator]
`
`Euro Dollar Exchange Rate (EUR USD) - Historical Chart
`(available at https://www.macrotrends.net/2548/euro-dollar-
`exchange-rate-historical-chart) [Euro-Dollar-Exchange-Rate]
`
` viii
`
`9
`
`

`

`
`
`2041
`
`Smartphone Shipments Declined in the Fourth Quarter But 2021
`Was Still a Growth Year with a 5.7% Increase in Shipments,
`According to IDC, Jan. 27, 2021 (available at
`https://www.idc.com/getdoc.jsp?containerId=prUS48830822)
`[Smartphone-Shipments]
`
`2042
`
`Declaration of Parham Hendifar
`
` ix
`
`10
`
`

`

`
`
`I.
`
`INTRODUCTION1
`
`The ’879 patent, filed in 2002 with claims directed towards a gliding-based
`
`user interface, is not just any patent, nor is Neonode just any patent owner. When
`
`Neonode introduced its N1 phone in 2002—five years before Apple’s iPhone and
`
`seven years before Samsung’s Galaxy—it was widely recognized as the first smart
`
`phone to use swipe gestures:
`
`
`
`Ex. 2020 [Hollatz-Dissertation] 8; see also Section II.A.1 (additional evidence).
`
`The N1, and its swiping user interface in particular, was widely praised in gushing
`
`terms. Industry observers called it “simply amazing,” “extremely intuitive,” and
`
`
`1 Based on agreement between the parties and approval from the Board (see
`
`Board email dated February 25, 2022, Ex. 2037), the Petition is limited to Grounds
`
`2A-2D only.
`
`
`
`1
`
`11
`
`

`

`
`
`nothing like the “dreaded gestures” of prior pen-based systems, like the references
`
`Petitioners rely upon here.
`
`While Petitioner Samsung now contends that the ’879’s claims are invalid, it
`
`sang a far different tune in 2005 when the head of Samsung’s mobile telecom
`
`division visited Neonode and proclaimed that Neonode’s intuitive user interface
`
`was “the future of mobile phones.” Ex. 2026 [Bystedt-Decl.] ¶ 9. Shortly
`
`thereafter, Samsung licensed the application that later issued as the ’879 Patent,
`
`only to later infringe the patent once the license agreement expired.
`
`Against this patent, Petitioners recycle an old, stylus-based reference
`
`(Hirayama-307)—a quintessential example of the aforementioned “dreaded” pen-
`
`based systems—that was already carefully considered by the examiner during
`
`prosecution. While the examiner found Hirayama-307 to be “pertinent to [the]
`
`applicant’s disclosure,” it was too far afield to be a basis of any rejection. Ex.
`
`2009 [2006-03-23 Non-Final Rejection] 15. And for good reason—as Hirayama-
`
`307 fails to disclose many limitations of the claimed invention.
`
`First, the claims require a “gliding … away” gesture to “activate” a function
`
`but Petitioner relies upon Hirayama-307’s drag-and-drop operation, the likes of
`
`which the Applicant made perfectly clear in prosecution is distinct from the
`
`“gliding … away” limitation:
`
`
`
`2
`
`12
`
`

`

`
`
`Hoshino does not teach gliding a finger away from an icon. Instead,
`Hoshino teaches a drag-and-drop operation for moving an icon.
`
`Ex. 1003 [Prosecution-History] 171; see Section III.A, infra.
`
`Second, Petitioner also fails to demonstrate that the claimed requirement that
`
`the “representation of the function” not be “relocated or duplicated” during the
`
`“gliding … away” of the “object” (e.g., finger) is obvious because Hirayama-307
`
`makes clear that its icon’s “display coordinate position is moved in accordance
`
`with the movement of the position coordinate of the point of the pen.”—i.e., it is
`
`“relocated or duplicated.” Ex. 1006 [Hirayama-307] 2:5-13. And as the Board
`
`already found, a POSITA would not have been motivated to combine Hirayama-
`
`307 with Ren to meet this limitation. Paper 24, 20. See Section III.B, infra.
`
`The Petition also fails to disclose or render obvious dependent claims 6 and
`
`15 for yet additional reasons. See Sections IV and V, infra.
`
`For all of these reasons, the claims should be affirmed.
`
`II.
`
`INDICIA OVERWHELMINGLY SUPPORTS A
`SECONDARY
`FINDING OF VALIDITY.
`
`“Objective indicia of non-obviousness ‘can be the most probative evidence
`
`of non-obviousness in the record, and enables the court to avert the trap of
`
`hindsight.’” Institut Pasteur v. Focarino, 738 F.3d 1337, 1346 (Fed. Cir. 2013);
`
`Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983)
`
`(“secondary considerations may often be the most probative and cogent evidence
`
`
`
`3
`
`13
`
`

`

`
`
`in the record. It may often establish that an invention appearing to have been
`
`obvious in light of the prior art was not.”). Such “objective evidence... ‘is not just
`
`a cumulative or confirmatory part of the obviousness calculus but constitutes
`
`independent evidence of nonobviousness.’” Cheese Sys. v. Tetra Pak Cheese &
`
`Powder Sys., 725 F.3d 1341, 1353 (Fed. Cir. 2013). This is just such a case.
`
`Neonode’s N1 phone, introduced in 2002—five years before Apple’s
`
`iPhone—has been widely recognized by industry observers and the public alike as
`
`the first commercial phone to implement a user interface based primarily on
`
`swiping. Neonode’s swipe-based user interface was widely praised too, described
`
`by technology observers as, inter alia, “quite obviously unique,” “compelling and
`
`... a user experience simpler than pretty much anything else that comes to mind,”
`
`“simple and brilliant,” “advanced simplicity,” and “extremely intuitive.” Such
`
`praise heaped upon the N1’s swiping-based user interface, moreover, is directly
`
`tied to the “gliding … away” user interface that is the subject of the ’879’s claims.
`
`See Section II.A, infra.
`
`In fact, while Petitioners now assert that the claims were simply obvious,
`
`representatives of Petitioner Samsung were visibly impressed with the
`
`demonstration of Neonode’s technology and licensed the application that issued as
`
`the ’879 patent in 2005—only to later infringe the claims once the license expired.
`
`See Section II.B, infra. With respect to Petitioner Apple, as one analyst observed
`
`
`
`4
`
`14
`
`

`

`
`
`upon introduction of the first iPhone, “it must be vexing to see Apple essentially
`
`claim ownership of concepts the Neonode phone has been using for at least five
`
`years.” Ex. 2013 [Pen-Computing-Magazine-N2-Phone-Review] 9.
`
`A. Neonode’s Innovative Swiping User Interface, Years Ahead Of
`Apple’s And Samsung’s Offerings, Received Substantial Industry
`Praise And Is The Subject Of The ’879’s Claims.
`
`Neonode’s N1 mobile phone was introduced in spring 2002 (Ex. 2026
`
`[Bystedt-Decl.] ¶ 3) and its N2 was sold starting in 2007. Ex. 2022 [Martensson-
`
`Decl.] ¶ 6. From its inception, the core distinguishing feature of Neonode’s phones
`
`was their swipe-based user interface. Neonode specifically touted its “specially
`
`designed interface” that allows “you to easily access the different applications by
`
`using simple sweeping gestures ... on the screen.” Ex. 2008 [N2-Advertisement-
`
`Video] (00:27-00:35); see also id., (00:45-00:51) (“And you can easily access all
`
`of the Neonode N2’s content by using the seven available sweeps.”). As Neonode
`
`explained, “there is nothing else you need other than your intuition.” Id., (01:20-
`
`01:27).
`
`The swipe gestures touted in Neonode phones are the “gliding … away”
`
`gesture upon which the ’879 patent and its claims are centered. Ex. 2023 [Shain-
`
`Decl.] ¶¶ 4-6; Ex. 2007 [Rosenberg-2nd-Decl.] ¶¶ 40-41; Section III.A, infra. In
`
`the ’879’s Summary of the Present Invention, the patent identifies the problems the
`
`inventors sought to address, including:
`
`
`
`5
`
`15
`
`

`

`
`
`It is a problem to provide a user-friendly interface that is adapted to
`handle a large amount of information and different kinds of traditional
`computer-related applications on a small handheld computer unit.
`
`It is a problem to provide a user interface that is simple to use, even
`for inexperienced users of computers or handheld devices.”
`
`...
`
`It is also a problem to provide a simple way to make the most
`commonly used functions for navigation and management available
`in the environment of a small handheld computer unit.
`
`Ex. 1001 [’879] 1:49-61. The ’879, thus, is centered upon the problems of making
`
`a “user-friendly interface” for a handheld device that is “simple to use even for
`
`inexperienced users” and provides “a simple way to make the most commonly
`
`used functions for navigation and management available.”
`
`The claimed inventions address these problems by claiming a user interface
`
`for a mobile handheld computer unit that includes a touch sensitive area that
`
`includes a representation of a function, wherein the representation consists of only
`
`one option for activating the function and wherein an object (e.g., a finger) touches
`
`the touch sensitive area where the representation is provided after which the
`
`“object,” the finger in our example, “glid[es] along the touch sensitive area away
`
`from the touched location, wherein the representation of the function is not
`
`relocated or duplicated during the gliding.”
`
`
`
`6
`
`16
`
`

`

`
`
`In other words, functions are activated by simply using an object such as a
`
`finger to glide away from the representation of a function (i.e., swiping), without
`
`relocating or duplicating the representation. And, as explained in detail in Section
`
`III.A.1, infra, the Applicant made abundantly clear that the “gliding” limitation of
`
`the claim is distinct from traditional “drag-and-drop” operations. See also, e.g.,
`
`Ex. 1003 [Prosecution-History] 171 (“Hoshino does not teach gliding a finger
`
`away from an icon. Instead, Hoshino teaches a drag-and-drop operation for
`
`moving an icon.”).
`
`The Applicant also equated the “gliding ... away” motion with “swiping.”
`
`Ex. 1003 [Prosecution-History] 269 (“a finger touches a touch-sensitive screen at a
`
`location where an icon for a function is displayed, and then rubs/swipes/glides
`
`along the touch screen away from the location without lifting the finger.”); Ex.
`
`2007 [Rosenberg-2nd-Decl.] ¶ 41. The Applicant also specifically referenced and
`
`provided a link to its promotional video for a commercial embodiment, the
`
`Neonode N2 phone, and asked the Examiner to “view the demonstration video …
`
`prior to reviewing Applicant’s arguments ….” Ex. 2035 [2008-03-14 Office-
`
`Action-Response] 15-16; Ex. 2008 [N2-Advertisement-Video]. As the screen
`
`shots below from the video show, the “gliding … away” gesture is similar to what
`
`many today’s systems refer to as a “swipe” gesture and is distinct from a drag-and-
`
`
`
`7
`
`17
`
`

`

`
`
`drop operation. Specifically, the thumb is placed on a representation of a function
`
`(an arrow) and through a swiping motion, the menu screen opens:
`
`
`
`See Ex. 2008 [N2-Advertisement-Video ] (screenshots from 00:26-00:27). Patent
`
`Owner respectfully requests that the Board review the brief video for a
`
`demonstration of the seamless “gliding … away” motion. Such gliding
`
`corresponds to what is shown, for instance, in Figure 2 which shows a thumb
`
`gliding along the touchscreen:
`
`
`
`
`
`8
`
`18
`
`

`

`
`
`Addressing the problems of providing a “user-friendly interface” for a
`
`handheld device that is “simple to use even for inexperienced users” by activating
`
`functions via a simple glide (swipe) as claimed and as implemented in Neonode’s
`
`N1 and N2 phones was widely praised. Pen Computing Magazine described
`
`Neonode N1 phone’s swipe as “simple and brilliant” and “not” like the “dreaded
`
`gestures” of the pen computing devices (like Petitioner’s Hirayama-307):
`
`Swipe, swipe, swipe
`
`You see, instead of the usual menus and pulldowns, most operations are
`performed by sweeps of your finger—usually your thumb—across the
`surface of the Neonode’s display. […] If this sounds like the dreaded
`“gestures” that never really caught on in pen computing, it’s not. The
`swipes are much simpler, there are only a few, and they are consistently
`used throughout all applications. The idea here is to let you hold a
`phone in the palm of your hand and operate it entirely with your thumb.
`No need to push buttons, view tiny menus, pull out a tiny stylus, or use
`scrollwheels, rockers or other such vexing miniature controls. […]
`Neonode’s swiping interface is [] simple and brilliant.
`
`Ex. 2012 [Pen-Computing-Magazine-N1-Phone-Review] 2-3. As the article
`
`concludes:
`
`What’s the bottomline? The Neonode phone is quite obviously
`unique, ... The user interface is compelling and it’s easy to see how
`just a bit more development could provide almost total consistency and
`thus a user experience simpler than pretty much anything else that
`
`
`
`9
`
`19
`
`

`

`
`
`comes to mind. The speed is simply amazing. That’s the way a phone
`should operate.”
`
`Id., 5.
`
`Other technology reviewers in the field were similarly impressed with the
`
`“extremely intuitive” swipe-based gesture (Ex. 2014 [Trend-Hunter-Article]),
`
`calling it “advanced simplicity” (id., 1). See also Exs. 2016 [tnkgrl-Media-post] 1
`
`(“I’ve been playing with my N1m on and off, and I’m very impressed! It’s
`
`definitely a best kept secret device – Neonode’s touch-based user interface with
`
`gesture recognition ... is extremely intuitive ...”); 2014 [Trend-Hunter-Article] 1
`
`(“[The N2] has the most advanced touchscreen available, and has no buttons ...
`
`‘Neonode N2 is designed for advanced simplicity. You do everything on-screen,
`
`simply and conveniently, with just one finger,’ Infibeam says. ‘The combination
`
`of an optical touch screen and specifically designed user interface makes access to
`
`all features and content of your Neonode N2 both quick and easy.’”); 2015 [Trend-
`
`Hunter-About], 2017 [tnkgrl-Media-About]; Ex. 2021 [iPhone-Killer ] 2 (“the N2
`
`from Neonode Inc. – is the strongest contender for the title of ‘iPhone killer,’ ...
`
`‘They’ve come out with a kick-ass device’... the [N1’s] screen reacts to the
`
`intuitive passage of a finger over the screen to initiate basic phone, Web browser
`
`and multimedia functions.”). Mr. Bystedt, who was at Neonode and involved in
`
`marketing, likewise confirms that there were numerous articles about the N1
`
`
`
`10
`
`20
`
`

`

`
`
`phone, particularly its gesture-based touch screen user interface. Ex. 2026
`
`[Bystedt-Decl.] ¶ 3.
`
`This well-deserved praise did not only come from observers. Following
`
`Neonode’s demonstration of its N1 mobile handset in spring 2002 at the CeBIT
`
`trade show in Germany, Neonode and the N1 became famous in Stockholm and
`
`internationally. Ex., 2026 [Bystedt-Decl.] ¶ 3. In the Stockholm tech and startup
`
`business community at that time, Neonode’s N1 was the talk of the town. Id.
`executives from Samsung Mobile, came to Stockholm to meet with Neonode. Id.,
`
`Furthermore, both Sir Christopher Gent, the CEO of Vodaphone, and senior
`
`¶ 8. The excitement surrounding the phone was focused on its novel gesture-based
`
`user interface. Ex. 2024 [Backlund-Decl.] ¶¶ 11-12; Ex. 2026 [Bystedt-Decl.] ¶ 3.
`
`Tellingly, Petitioner Samsung, in sharp distinction to its contention now that
`
`the ’879’s claims are obvious, recognized the novelty of Neonode’s swipe-based
`
`user interface. Senior management at Samsung’s mobile telecom division were
`
`extremely impressed by Neonode’s N1, and in early 2005 began discussions with
`
`Neonode about licensing the N1’s gesture-based user interface and touch screen
`
`technology. Ex. 2026 [Bystedt-Decl.] ¶ 9. Ki-Tai Lee (K. T. Lee), head of
`
`Samsung’s mobile telecom division, presciently told Neonode that he believed
`
`Neonode’s intuitive user interface was “the future of mobile phones.” Id.
`
`Neonode had many hours of meetings with Samsung, including one in London,
`
`
`
`11
`
`21
`
`

`

`
`
`attended by Marcus Bäcklund, Thomas Ericsson, and Per Bystedt. Id. Mr. Lee
`
`told Samsung’s negotiators—in Neonode’s presence—that “we need this,”
`
`referring to the Neonode’s N1 gesture-based user interface and the license for the
`
`user interface. Id. And, as described below, Petitioner Samsung put its money
`
`where its mouth is, paying significantly to license Neonode’s technology. See
`
`Section II.B, infra.
`
`Later, when Petitioner Apple introduced the first iPhone in 2007 (Ex. 2033
`
`[Wikipedia-iPhone-Release-Dates]),2 observers and others quickly recognized its
`
`use of the brilliant and simple swipe interface that Neonode had developed and
`
`introduced five years earlier:
`
`Listening to Apple’s claims of all the patents covering the iPhone’s user
`interface one might assume the iPhone broke completely new ground
`and went where no phone had ever gone before.
`
`That is not entirely so. Neonode, a small Swedish company ...
`announced the Neonode N1 back in 2002. ... It did not use a stylus
`either. Instead, it used a swipe and tap system on a novel touch screen
`that used a grid of infrared beams to sense finger movement.
`
`
`2 Samsung did not introduce a gesture-based mobile phone until years after
`
`Apple. Ex. 2034 [Wikipedia-Samsung Galaxy-Release-Dates].
`
`
`
`12
`
`22
`
`

`

`
`
`... And if the iPhone’s swipes and taps seem futuristic, they are not.
`Neonode has been using them since the first N1 came out. In fact, the
`company’s Neno user interface is based entirely on swipes and taps.
`
`Ex. 2013 [Pen-Computing-Magazine-N2-Phone-Review] 1. The author followed,
`
`[I]t must be vexing to see Apple essentially claim ownership of
`concepts the Neonode phone has been using for at least five years.
`
`Id., 9.
`
`In fact, some users have gone so far as to make videos about how Neonode’s
`
`“sweeping touch screen” was the “original,” to the iPhone “copycat”:
`
`Ex. 2036 [User-Video ] (at 0:04, 0:06, 0:12, and 0:17).
`
`
`
`13
`
`
`
`23
`
`

`

`
`
`In accord, numerous academic papers and industry analysts recognized that
`
`Neonode’s swipe-based user interface was the pioneer in the field, and the “first
`
`smartphone to support touch gestures”:
`
`
`
`Ex. 2018 [PhD-Dissertation ] 9, see also, id., (“The Neonode N1 (Figure 11),
`
`available in 2004, was the first smartphone to use a touchscreen as primary input
`
`and to support touch gestures for several functions.”).
`
`Another paper similarly recognized that “The Neonode N1was the first
`
`mobile to use swipe gestures”:
`
`
`
`14
`
`24
`
`

`

`
`
`
`
`Ex. 2020 [Hollatz-Dissertation ] 8, see also, id., (“The Neonode N1 was the first
`
`commercially available mobile device to make extensive use of swipe gestures
`
`appropriate for one-handed use, including a browser that scrolled content vertically
`
`with swipes.”); Ex. 2029 [Neonode N1m video-review] 0:11-22 (“The reason I’m
`
`reviewing the Neonode N1m is because it’s an ancestor of the iPhone it is one of
`
`the first devices to use purely a finger-based interface ...”); Ex. 2019 [Ars-
`
`Technica-Article ] 8 (“[Neonode’s N1m] supported swiping gestures in addition to
`
`individual taps.”).
`
`Neonode’s N1 and N2’s user interfaces were also widely praised by users,
`
`particularly for their use of swiping. Just a small sampling of examples is below:
`
`
`
`15
`
`25
`
`

`

`
`
`athanasiothegr8 10 years ago
`
`Myfavorite phone.It has the fastest touchscreen and the most beautiful touch and an easy UI
`but the battery is weak and it has huge SAR.
`
`ty 1
`
`GD
`
`REPLY
`
`Michael Angelo 10 years ago
`
`Neonode adapttheir fast & responsive touchscreenon this phone, of which this companyis
`famousfor.
`
`
`
`
`
`
`
`REPLY
`
`Stormwolf420 10 years ago
`| ownthis phone,it turns a lot of heads, andit's an EXCELLENTphone,too, the swiping is more intuitive than | thought, and once
`onegets the hangofit, this is the bets touch screenever. | had to import mine from Malaysia, and was slapped with a HUGE
`importfee, but hell, for a phone as unique looking and as goodasthis one,it was worth every penny!
`
`th GF
`
`REPLY
`
`NEOTIMELESS3 years ago
`
`| am still using it :) works perfect
`
`ty GF
`
`REPLY
`
`spaided 12 years ago
`
`| have this phone and its GREAT!!! Not a single problem atall!!
`
`mH
`
`PB
`
`REPLY
`
`Ex. 2031 [Neonode-Comments-2];
`
`oo
`
`PB
`
`REPLY
`
`2) Tom Goedkoop 13years ago
`
`well, it's just a good phone, the sweeping worksgreat, and the connection with the network is good
`(sorry for my english,it's not my best class:P)
`
`mw
`
`PP
`
`
`
`16
`
`26
`
`

`

`
`
`
`
`Ex. 2030 [Neonode-Comments-1]; see also Ex. 2032 [Neonode-Comments-3].
`
`As courts have recognized, such significant evidence of praise centered upon
`
`the claimed “gliding ... away” user interface is compelling evidence of
`
`nonobviousness. Institut Pasteur, 1347 (“[I]ndustry praise ... provides probative
`
`and cogent evidence that one of ordinary skill in the art would not have reasonably
`
`expected [the claimed invention].”); Apple Inc. v. Samsung Elecs. Co. Ltd., 839
`
`F.3d 1034, 1053 (Fed. Cir. 2016) (en banc) (“[e]vidence that the industry
`
`praised...a product that embodies the patent claims weighs against an assertion that
`
`the same claimed invention would have been obvious.”). Such praise is especially
`
`probative where, as here, it comes from industry participants, including
`
`competitors like Samsung. Id. (“Industry participants, especially competitors, are
`
`not likely to praise an obvious advance over the known art.”). See Ex. 2007
`
`[Rosenberg-2nd-Decl.] ¶ 49.
`
`B.
`
`The Commercial Success And Licensing Of The Neonode
`Technology Further Demonstrates The Novelty Of The Claims.
`
`As discussed, Petitioner Samsung, after meeting with Neonode, expressed
`
`substantial interest in the swipe-based user interface and described it as “the future
`
`
`
`17
`
`27
`
`

`

`
`
`of mobile phones” and Samsung recognized, “we need this.” Ex. 2026 [Bystedt-
`
`Decl.] ¶ 9. This was not just talk. Samsung signed a license agreement in July
`
`2005, licensing the application from which the ’879 issued, and providing for a
`
`
`
`
`
`. Ex. 2028 [Samsung-License-Agreement]; Ex. 2026
`
`[Bystedt-Decl.] ¶ 10; Ex. 2024 [Backlund-Decl.] ¶¶ 13-14. Indeed, in 2020 and
`
`2021, Samsung is reported to have sold 256.6 and 272 million units, respecti