Trials@uspto.gov
`571-272-7822
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`Paper 24
`Date: June 15, 2021
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`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.
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`Before MICHELLE N. ANKENBRAND, KARA L. SZPONDOWSKI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`ANKENBRAND, Administrative Patent Judge.
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`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
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`571-272-7822
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`Paper 24
`Date: June 15, 2021
`
`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.
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`Before MICHELLE N. ANKENBRAND, KARA L. SZPONDOWSKI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`ANKENBRAND, Administrative Patent Judge.
`
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`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
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`IPR2021-00144
`Patent 8,095,879 B2
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`I. INTRODUCTION
`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
`and Apple Inc. (collectively, “Petitioner”) filed a Petition requesting an inter
`partes review of claims 1–6 and 12–17 of U.S. Patent No. 8,095,879 B2
`(Ex. 1001, “the ’879 patent”). Paper 6 (“Pet.”). Neonode Smartphone LLC
`(“Patent Owner”) filed a Preliminary Response. Paper 23 (“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). The standard
`for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
`provides that an inter partes review may not be instituted “unless the
`Director determines . . . there is a reasonable likelihood that the petitioner
`would prevail with respect to at least [one] of the claims challenged in the
`petition.”
`For the reasons set forth below, upon considering the Petition,
`Preliminary Response, and evidence of record, we determine the information
`presented in the Petition does not establish a reasonable likelihood that
`Petitioner would prevail with respect to at least one of the challenged claims.
`Accordingly, we deny the Petition, and do not institute an inter partes
`review.
`
`II. BACKGROUND
`A. Related Matters
`The parties identify the following district court proceedings related to
`the ’879 patent: Neonode Smartphone LLC v. Apple Inc., Case No. 6:20-cv-
`00505 (W.D. Tex.) and Neonode Smartphone LLC v. Samsung Electronics
`Co. Ltd., Case No. 6:20-cv-00507 (W.D. Tex.). Pet. 92–93; Paper 7, 2.
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`Patent Owner also identifies as related IPR2021-00145 (challenging
`U.S. Patent No. 8,812,993 B2). Paper 7, 2.
`B. Overview of the ’879 Patent
`The ’879 patent, titled “User Interface for Mobile Handheld Computer
`Unit,” issued on January 10, 2012. Ex. 1001 at [45], [54]. The ’879 patent
`describes a user interface for a mobile handheld computer that has a touch
`sensitive area divided into a menu area and a display area. Id. at 1:6–9. The
`menu area shows a representation of a first, a second, and a third predefined
`function that “can be activated when the touch sensitive area detects a
`movement of an object with its starting point within the representation of the
`function on the menu area and with a direction from the menu area to the
`display area.” Id. at 1:65–2:5, 2:11–14. “The first function is a general
`application dependent function, the second function is a keyboard function,
`and the third function is a task and file manager.” Id. at 2:7–10.
`The user interface is “specifically adapted to be used with a small
`computer unit” having a touch sensitive area that is approximately 2–3
`inches and also is adapted so that a user can operated it with one hand. Id. at
`3:1–6.
`We reproduce Figure 1 of the ’879 patent below.
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`Figure 1 is a schematic view of touch sensitive area 1 on a mobile handheld
`computer unit, depicting menu area 2 adapted to present a representation of
`first 21, second, 22, and third 23 predefined functions. Id. at 3:21–22, 4:1–3.
`We reproduce Figure 2 of the ’879 patent below.
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`Figure 2 is a schematic side view illustrating how a user activates a function.
`Id. at 3:24–25. A user can activate any one of functions 21, 22, or 23 when
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`touch sensitive area 1 detects a movement of object 4 with its starting point
`A within the representation of a function on menu area 2 and with direction
`B from menu area 2 to display area 3. Id. at 4:7–11. Object 4 can be a
`finger, a pen, or another pointing device. Id. at 6:11–15.
`The ’879 patent explains that when a user activates, for example, the
`first function, the display area is adapted to display icons representing
`services or settings, depending on the current active application. Id. at 2:18–
`20. Figure 3, which we reproduce below, illustrates first function 21
`activated.
`
`
`Figure 3 is a schematic illustration of the first function. Id. at 3:26. Figure 3
`shows that after a user activates first function 21 with the movement
`depicted in Figure 2, display area 3 displays icons 211–216, each
`representing services or functions depending on the current active
`application. Id. at 4:12–15. If, for example, the active application handles a
`picture, then the icons showing on display area 3 after a user activates the
`first function “can be services such as ‘save to disk’, ‘send as SMS’, or
`‘delete’, and they can be setting such as ‘resolution’, ‘colour’, or
`‘brightness’.” Id. at 4:24–28. If no application is active on the computer,
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`then icons 211–216 represent services or settings of the operating system,
`such as background picture clock, alarm 215, users 213, and help 211. Id. at
`3:29–32.
`The ’879 patent describes, in similar fashion, how a user activates the
`second keyboard function and the third task and file manager function. See
`id. at 4:34–5:63.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–6 and 12–17 of the ’879 patent
`(collectively, “the challenged claims”). Claim 1, the only independent
`claim, is illustrative of the claimed subject matter, and recites:
`1. A non-transitory computer readable medium storing a
`computer program with computer program code, which, when
`read by a mobile handheld computer unit, allows the computer to
`present a user interface for the mobile handheld computer unit,
`the user interface comprising:
`a touch sensitive area in which a representation of a function is
`provided, wherein the representation consists of only one
`option for activating the function and wherein the function is
`activated by a multi-step operation comprising (i) an object
`touching the touch sensitive area at a location where the
`representation is provided and then (ii) the object gliding along
`the touch sensitive area away from the touched location,
`wherein the representation of the function is not relocated or
`duplicated during the gliding.
`Ex. 1001, 6:45–59.
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable based on
`the following grounds:
`Reference(s)/Basis
`35 U.S.C. §
`Claim(s) Challenged
`Ren,2 Tanaka3
`103(a)1
`1, 14–17
`Ren, Tanaka, Hirayama3074
`103(a)
`2–5
`Ren, Tanaka, Hirayama307
`103(a)
`3
`Hirayama8785
`Ren, Tanaka, Allard6
`103(a)
`6, 13
`Ren, Tanaka, Henckel7
`103(a)
`12
`Hirayama307, Ren
`103(a)
`1, 2, 4, 5, 14–17
`Hirayama307, Ren,
`103(a)
`3
`Hirayama 878
`Hirayama307, Ren, Allard
`103(a)
`6, 13
`Hirayama307, Henckel
`103(a)
`12
`Jermyn8
`103(a)
`1, 14, 15
`Pet. 1–2. Petitioner relies on the Declaration of Dr. Benjamin B. Bederson
`(Ex. 1002) to support its asserted grounds of unpatentability. Patent Owner
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’879 patent has an
`effective filing date before the effective date of the applicable AIA
`amendments, we refer to the pre-AIA version of 35 U.S.C. § 103.
`2 Xiangshi Ren & Shinji Moriya, Improving Selection Performance on Pen-
`Based Systems: A Study of Pen-Based Interaction for Selection Tasks,
`7 ACM Transactions on Computer-Human Interaction 384–416 (2000)
`(Ex. 1004).
`3 U.S. Patent No. 5,249,296, issued Sept. 28, 1993 (Ex. 1005).
`4 U.S. Patent No. 5,406,307, issued Apr. 11, 2014 (Ex. 1006).
`5 U.S. Patent No. 6,100,878, issued Aug. 8, 2000 (Ex. 1009).
`6 U.S. Patent No. 5,615,384, issued Mar. 25, 1997 (Ex. 1010).
`7 U.S. Patent No. 5,463,725, issued Oct. 31, 1995 (Ex. 1013).
`8 Ian Jermyn et al., The Design & Analysis of Graphical Passwords, in
`Proceedings of the 8th USENIX Security Symposium (1999) (Ex. 1014).
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`disputes that Petitioner’s asserted grounds render any of the challenged
`claims unpatentable. See generally Prelim. Resp. Patent Owner relies on
`the Declaration of Dr. Craig Rosenberg (Ex. 2001).
`
`III. DISCUSSION
`A. Level of Ordinary Skill in the Art
`For Petitioner, Dr. Bederson testifies that a person of ordinary skill in
`the art at the time of the invention, “would have had at least a bachelor’s
`degree in computer science, computer engineering, or the equivalent
`education and at least two years of experience in user-interface design and
`development,” but “[a]dditional years of experience could substitute for
`formal education, and vice versa.” Ex. 1002 ¶ 49. Patent Owner’s expert,
`Dr. Rosenberg, applies Dr. Bederson’s description of the ordinarily skilled
`artisan. Ex. 2001 ¶ 33. We adopt Dr. Bederson’s description of the level of
`ordinary skill in the art because it is consistent with the problems and
`solutions the ’879 patent identifies and with the prior art.
`B. Claim Construction
`Neither party contends that there are claim terms in dispute, or that we
`need to construe any terms for purposes of this decision. See Pet. 5–6; see
`generally Prelim. Resp. After reviewing the parties’ arguments and
`evidence, we determine that we do not need to expressly construe any claim
`terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`C. Asserted Obviousness Based on Ren and Tanaka
`Petitioner asserts five obviousness challenges based on the
`combination of Ren and Tanaka. See Pet. 1 (summary of grounds 1A–1E).
`Specifically, Petitioner contends that the subject matter of the challenged
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`claims of the ’879 patent would have been obvious over: (1) Ren and
`Tanaka (claims 1 and 14–17); (2) Ren, Tanaka, and Hirayama307 (claims 2–
`5); (3) Ren, Tanaka, Hirayama307, and Hirayama878 (claim 3); (4) Ren,
`Tanaka, and Allard (claims 6 and 13); and (5) Ren, Tanaka, and Henckel
`(claim 12). See, e.g., id.
`Before turning to Petitioner’s arguments, we provide a brief summary
`of Ren and Tanaka, as they form the basis of our analysis.
`1. Ren (Ex. 1004)
`Ren describes pen-based selection strategies for use on small, touch-
`sensitive screens. Ex. 1004, 384–385. In small pen-based systems, users
`access information by selecting a target more often than by inputting
`handwritten data. Id. “Common targets are menus, data . . . ranges etc., and
`the selection of keys on a software keyboard displayed on a screen.” Id.
`Users have to select smaller targets as the amount of information displayed
`on a screen increases. Id. Thus, Ren recognizes the “trade-off between the
`size and accessibility of targets and the amount of information presented on
`the screen” as “a fundamental problem in human-computer design” that “is
`especially obvious in mobile products, such as . . . PDAs.” Id.
`Ren specifically studies six selection strategies depicted in its Figure
`3: Direct On, Slide Touch, Direct Off, Slide Off, Space On, and Space
`Touch. We reproduce Figure 3 below, with a red rectangle we have added
`around the a → c → b → a route of the Slide Off strategy on which
`Petitioner focuses its unpatentability arguments.
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`Figure 3 shows the six strategies for selecting a target that Ren uses in its
`experiments grouped according to their characteristics, annotated with a red
`rectangle to highlight the a → c → b → a route of Ren’s Slide Off strategy.
`Id. at 389–390. In Figure 3, “[t]he arrows show the direction of pen-tip
`movement,” “the dashed lines indicate that the pen-tip is not in contact with
`the screen surface (either before or after contact), and the solid lines . . .
`show that the pen-tip is in contact with the screen surface.” Id. at 389. For
`the Slide Off strategy, “[t]he target is highlighted only while the pen is in
`contact with it; however, the selection is made when the pen is removed
`from any point on the screen either inside or outside the target area,” as
`illustrated in the a → c → b → a route. Id. at 391. Ren describes the Slide
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`Off strategy as “an extension of the Direct Off strategy.” Id. In the Direct
`Off strategy, “the target is highlighted only while the pen is touching it,” and
`the “selection is made at the moment the pen is taken off the target.” Id. at
`390.
`
`2. Tanaka (Ex. 1005)
`Tanaka relates to an information-processing device for controlling
`window positions. Ex. 1005, 1:7–8. Specifically, Tanaka discloses a device
`that allows a user to use both of two icon-selecting methods—a “check” and
`a “drag”—to control window positions on the screen. Id. at 2:33–38. The
`“check” method allows a user to open a new window corresponding to a
`selected icon on a display screen when the user checks the icon with a
`pointing device. Id. at 1:9–12, 3:5–9. The “drag” method allows a user to
`open a new window corresponding to a selected icon “in the position to
`which the icon is dragged and from which the pointing pen is lifted up.” Id.
`at 1:12–14, 3:9–12.
`
`3. Claims 1 and 14–17
`Petitioner contends that the combined teachings of Ren and Tanaka
`disclose each limitation of claim 1, and that a person of ordinary skill in the
`art would have had reason to implement Ren’s selection strategies,
`particularly the a → c → b → a Slide Off strategy route, on Tanaka’s device.
`Pet. 16–31; see id. at 18–19 (discussing reason to combine). Petitioner relies
`on Dr. Bederson’s testimony to support its assertions. See id. Patent Owner
`argues that Petitioner fails to show sufficiently why a person of ordinary
`skill in the art would have had a reason to combine Ren’s and Tanaka’s
`teachings with a reasonable expectation of success in achieving the claimed
`invention. Prelim. Resp. 1–2, 3–36. We focus our discussion on that issue.
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`Petitioner contends that an ordinarily skilled artisan would have
`implemented Ren’s selection strategies on Tanaka’s device for a number of
`reasons. First, Petitioner notes that “Ren and Tanaka are directed to
`solutions to the same problem—target selection techniques in pen-based
`tablet systems.” Pet. 18–19. In view of this, Petitioner asserts a “[person of
`ordinary skill in the art] would have recognized Ren as disclosing a handful
`of selection techniques that would have been obvious to try and implement
`with pen-based [graphical user interface] interaction systems, such as those
`in Tanaka.” Id. at 19.
`Petitioner’s obvious-to-try argument follows from its assertion that
`Ren and Tanaka are directed to solutions to the same problem. Although
`Petitioner’s assertion may establish that the references are analogous art, it
`falls short of rationally articulating sufficient reasons to support the
`conclusion of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`418 (2007) (“it can be important to identify a reason that would have
`prompted a person of ordinary skill in the relevant art to combine elements
`as the new invention does”). Further, even assuming that Ren’s disclosure
`of six selection strategies qualifies as “a finite number of identified,
`predictable solutions,” id. at 421, Petitioner does not direct us to any “design
`need or market pressure to solve a problem,” or reason an ordinarily skilled
`artisan would have selected a particular strategy from Ren to produce the
`claimed invention. Id.; In re Cyclobenzaprine Hydrochloride Extended–
`Release Capsule Patent Litig., 676 F.3d 1063, 1072 (Fed. Cir.
`2012) (“Evidence of obviousness, especially when that evidence is proffered
`in support of an ‘obvious-to-try’ theory, is insufficient unless it indicates that
`the possible options skilled artisans would have encountered were ‘finite,’
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`‘small,’ or ‘easily traversed,’ and that skilled artisans would have had a
`reason to select the route that produced the claimed invention.”).
`Next, Petitioner argues that the ordinarily skilled artisan only would
`have implemented Ren’s Slide Off strategy into Tanaka’s device for its
`simplicity. As we discuss below, we agree with Patent Owner’s argument
`that such a modification to Tanaka would have been contrary to Tanaka’s
`express purpose.
`In support of this argument, Petitioner points to Tanaka’s “check” and
`“drag” methods, and contends that the ordinarily skilled artisan would have
`recognized the “check” method as Ren’s Direct Off technique and the “drag”
`method as “similar to Ren’s Slide Off strategy with route a → c → b → a.”
`Pet. 23–24. Based on Ren’s teachings about the Direct Off and Slide Off
`efficiencies, Petitioner argues an ordinarily skilled artisan “would have been
`motivated to implement the Slide Off strategy exclusively of the Direct Off
`strategy for example for pocket-sized pen-based applications with small
`targets, and not implement both strategies for the same target.” Id. at 28–29
`(citing Ex. 1002 ¶ 108). This is so, argues Petitioner, because having only a
`single function and single interaction technique is easy to explain, easier for
`a user to learn and remember, and easier and simpler to program and process
`than multiple potential gestures. Id. Petitioner further asserts that the
`ordinarily skilled artisan would have implemented the single function with
`predictable results, given its simplicity. Id. at 29 (citing Ex. 1002 ¶ 109).
`We disagree. Where “a patent claims a structure already known in the
`prior art that is altered by the mere substitution of one element for another
`known in the field, the combination must do more than yield a predictable
`result.” KSR, 550 U.S. at 416. “However, combinations that change the
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`‘basic principles under which the [prior art] was designed to operate,’ or that
`render the prior art ‘inoperable for its intended purpose,’ may fail to support
`a conclusion of obviousness.” Plas-Pak Indus., Inc. v. Sulzer Mixpac AG,
`600 F. App’x 755, 757–758 (Fed. Cir. 2015) (non-precedential) (quoting In
`re Ratti, 270 F.2d 810, 813 (CCPA 1959); In re Gordon, 733 F.2d 900, 902
`(Fed. Cir. 1984)). As Patent Owner argues, “Tanaka’s expressed concern
`was to enable multiple activation techniques rather than only a single
`technique.” Prelim. Resp. 23 (citing Ex. 1005, 2:33–38, 6:55–7:6). Tanaka
`explains that known “[c]onventional information processing apparatuses for
`controlling window positions adopt[ed] exclusively one of the two icon-
`selecting methods, ‘check’ or ‘drag.’” Ex. 1005, 1:48–50. In contrast,
`Tanaka’s object is “to provide an information processing apparatus for
`controlling window positions,” that allows “the user to employ any one of
`the two icon-selecting methods, ‘check’ and ‘drag’ to control window
`positions as desired on the screen.” Id. at 2:33–38; see also id. at 6:55–6:65
`(explaining that the invention allows a user to use the “check” and “drag”
`methods to control window positions). Indeed, Tanaka states that “[u]nlike
`its prior art counterparts, the inventive apparatus accepts all kinds of pen
`operations and saves the user a significant amount of operating chores.” Id.
`at 7:3–6 (emphasis added).
`Given Tanaka’s express purpose to create an apparatus that allows a
`user to utilize both the “check” and “drag” methods to select icons and
`control windows, implementing only Ren’s Slide Off strategy into Tanaka’s
`device would change Tanaka’s principle of operation and render Tanaka
`inoperable for its intended purpose. Accordingly, Petitioner fails to show
`sufficiently that a person of ordinary skill in the art would have had a reason
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`to combine Ren’s and Tanaka’s teachings to arrive at the claimed invention.
`As a result, Petitioner fails to demonstrate a reasonable likelihood of
`prevailing in its assertion that the subject matter of claim 1 would have been
`obvious over the combination of Ren and Tanaka. Further, because claims
`14–17 depend from claim 1, Petitioner also fails to demonstrate a reasonable
`likelihood of prevailing in its assertion that the subject matter of those
`claims would have been obvious over the combination of Ren and Tanaka.
`4. Remaining grounds involving Ren and Tanaka
`Petitioner challenges claims 2–6, 12, and 13 by adding Hirayama307,
`Hirayama307 and Hirayama878, Allard, or Henckel to the teachings of Ren
`and Tanaka discussed above. Pet. 35–49. Petitioner relies upon
`Hirayama307, Hirayama878, Allard, or Henckel for teaching the added
`limitations of these dependent claims and thus, does not remedy the
`deficiencies of the asserted art with respect to claim 1. Accordingly, for the
`same reasons discussed above, Petitioner fails to demonstrate a reasonable
`likelihood of prevailing in its assertion that the subject matter of claims 2–6,
`12, and 13 would have been obvious over the asserted combinations of
`references.
`D. Asserted Obviousness Based on Hirayama307 and Ren
`Petitioner asserts four obviousness challenges based on the
`combination of Hirayama307 and Ren. See Pet. 1–2 (summary of grounds
`2A–2D). Specifically, Petitioner contends that the subject matter of the
`challenged claims of the ’879 patent would have been obvious over:
`(1) Hirayama307 and Ren (claims 1, 2, 4, 5, and 14–17); (2) Hirayama307,
`Ren, and Hirayama878 (claim 3); and (3) Hirayama307, Ren, and Allard
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`(claims 6 and 13); and (4) Hirayama307 and Henckel (claim 12). See, e.g.,
`id.
`Before turning to Petitioner’s arguments, we provide a brief summary
`of Hiryama307.
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`1. Hirayama307 (Ex. 1006)
`Hirayama307 relates to a small data processing device comprising a
`pen, a display portion, and a transparent touch sensor input. Ex. 1006, 1:7–
`10, 2:67–3:6. When a user presses the power button, icons appear on the
`display, as shown in Figure 3A, which we reproduce below.
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`Figure 3A illustrates a display screen of Hirayama307’s device. When a
`user wants to make a call, for example, the user touches telephone icon 41
`with the pen point. Id. at 4:61–65. As the user moves the pen point to
`display portion 1, x-shaped cursor 42 appears on the screen of the display
`portion so the user “can visually confirm the exact position of the point of
`pen 3 on the input tablet 2 very clearly. Id. at 4:65–5:3. After the user
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`moves the pen point from icon 41 to display portion 1, “an icon (hereinafter
`. . . referred to as a window) enlarged in the form of the processing display
`mode of the desired icon 41 is automatically displayed on the display portion
`1 as shown in FIG. 3B.” Id. at 5:3–12.
`2. Claims 1, 2, 4, 5, and 14–17
`Petitioner contends that the combined teachings of Hirayama307 and
`Ren disclose each limitation of claim 1, and that a person of ordinary skill in
`the art would have had reason to implement Ren’s selection strategies,
`particularly the a → c → b → a Slide Off strategy route, on Hirayama307’s
`device. Pet. 49–62. Petitioner relies on Dr. Bederson’s testimony to support
`its assertions. See id. Patent Owner disagrees, arguing, among other things,
`that Petitioner fails to show sufficiently that Hirayama307 discloses “the
`representation of the function is not relocated or duplicated during []
`gliding,” as claim 1 requires. Prelim. Resp. 37–42. Patent Owner also
`argues that an ordinarily skilled artisan would not have had reason to
`implement Ren’s a → c → b → a Slide Off route on Hirayama’s device. Id.
`at 43–46. We focus our analysis on these issues.
`a. “the representation of the function is not relocated or
`duplicated during [] gliding”
`Petitioner asserts that “Hirayama307 discloses icon 41 is selected if
`the user ‘moves (i.e. drags) the point of the pen 3’. . . or by ‘dragging the
`pen 3.” Pet. 60. From this disclosure, Petitioner reasons that it would have
`been obvious to implement the user interface such that the icon is not
`relocated or duplicated during pen gliding. Id. Pointing to Figures 3A and
`3B, Petitioner contends that Hirayama307 discloses dragging the pen from
`the icon to the display screen such that the icon remains in the same position
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`on the screen it was located before dragging. Id. at 61–62. Petitioner
`concludes that an ordinarily skilled artisan “would have understood this as at
`least a suggestion the icon is not relocated or duplicated during the gliding of
`the pen because the icon was still in the same location it started at the
`beginning of the dragging operation.” Id. at 62 (citing Ex. 1002 ¶ 159).
`Petitioner fails to make a sufficient showing on this record because
`Hirayama307 appears to disclose either relocating or duplicating the icon on
`the screen’s display. We reproduce Figure 3B below.
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`Figure 3B illustrates a display screen of Hiryama307’s device.
`Hirayama307 explains that, after the user moves the pen point from icon 41
`to display portion 3, “an icon (hereinafter . . . referred to as a window)
`enlarged in the form of the processing display mode of the desired icon 41 is
`automatically displayed on the display portion 1 as shown in FIG. 3B.” Id.
`at 5:3–12. Hirayama307 further discloses that “[w]hen the user wants to
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`bring the large icon, i.e., the window 43 displayed on the display portion 1
`. . . back to the original position” if the user touches a portion “within the
`window 43 with the point of the pen 3 and drags the point of the pen 3 back
`to the telephone icon 41 . . . then the icon of large size can be returned to and
`stored in that position.” Id. at 6:22–31; see also id. at Fig. 4A (flow chart
`including the step of enlarging the icon as a window), Fig. 4B (flow chart
`including the steps of reducing the icon and moving the reduced icon).
`Thus, contrary to Petitioner’s assertion, Hirayama307 appears to duplicate or
`relocate the representation of the function, i.e., icon, during gliding. As a
`result, Petitioner fails to show sufficiently that “[i]t would have been
`obvious given Hirayama307’s disclosure to implement the user interface
`such that” “the representation of the function is not relocated or duplicated
`during [] gliding,” as claim 1 requires.
`b. Reason to implement Ren’s strategy on Hirayama’s device
`Petitioner also argues that Ren discloses the limitation “the
`representation of the function is not relocated or duplicated during []
`gliding,” and that an ordinarily skilled artisan would have tried to implement
`Ren’s selection strategies on Hirayama307’s device with predictable results.
`Pet. 62 (citing Pet. § IV.A; Ex. 1002 ¶¶ 160–162). According to Petitioner,
`it would have been obvious to combine Hirayama307’s and Ren’s teachings
`because “Ren and Hirayama307 both are directed to solutions to the same
`problem, namely target selection techniques in pen-based tablet systems.”
`Id. Petitioner also asserts that a person of ordinary skill in the art “would
`have recognized Ren as disclosing a small number of selection techniques
`that would have been obvious to try and implement with pen-based
`[graphical user interface] interaction systems.” Id.
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`Petitioner fails to make a sufficient showing for the same reasons set
`forth above in connection with Petitioner’s Ren and Tanaka combination. In
`particular, Petitioner’s assertion that an ordinarily skilled artisan would have
`had reason to combine Hirayama307’s and Ren’s teachings because the
`references both are directed to solutions to the same problem establishes that
`the references are analogous art, but falls short of articulating reasoning with
`a rational underpinning to support the conclusion of obviousness. See KSR,
`550 U.S. at 418. And Petitioner does not direct us to any “design need or
`market pressure to solve a problem,” or any reason that an ordinarily skilled
`artisan would have selected a particular strategy from Ren to produce the
`claimed invention. Id.; In re Cyclobenzaprine Hydrochloride Extended–
`Release Capsule Patent Litig., 676 F.3d at 1072. Rather, Petitioner simply
`concludes that it would have been obvious to try. Although Petitioner cites
`to Dr. Bederson’s testimony for support, Dr. Bederson does not elaborate on
`Petitioner’s argument, as his testimony mirrors the Petition’s conclusion.
`Ex. 1002 ¶ 162.
`c. Conclusion
` Petitioner fails to demonstrate a reasonable likelihood of prevailing
`in its assertion that the subject matter of claim 1 would have been obvious
`over the combination of Hirayama307 and Ren. Further, because claims 2,
`4, 5, and 14–17 ultimately depend from claim 1, Petitioner also fails to
`demonstrate a reasonable likelihood of prevailing in its assertion that the
`subject matter of those claims would have been obvious over the
`combination of Hirayama307 and Ren.
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`3. Remaining Grounds Involving Hirayama307 and Ren
`Petitioner challenges claims 3, 6, 12, and 13 by adding Hirayama878,
`Allard, or Henckel to the teachings of Ren and Hirayama307 discussed
`above. Pet. 70–74. Petitioner relies upon Hirayama878, Allard, or Henckel
`for teaching the added limitations of these dependent claims and, thus, does
`not remedy the deficiencies of the asserted art with respect to claim 1.
`Accordingly, for the same reasons discussed above, Petitioner fails to
`demonstrate a reasonable likelihood of prevailing in its assertion that the
`subject matter of claims 3, 6, 12, and 13 would have been obvious over the
`asserted combinations of references.
`E. Asserted Obviousness Based on Jermyn
`Petitioner asserts that the subject matter of claims 1, 14, and 15 would
`have been obvious over Jermyn. See, e.g., Pet. 2. Before turning to
`Petitioner’s arguments, we provide a summary of Jermyn.
`1. Jermyn (Ex. 1014)
`Jermyn is a paper that focuses on the design and analysis of graphical
`password schemes for devices such as PDAs. Ex. 1014, 2. According to
`Jermyn, a graphical password serves the same purpose as a textual password,
`but consists of drawings alone or in addition to text. Id. Jermyn provides an
`example of a drawing in Figure 2, which we reproduce below.
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`Figure 2 is an input of a graphical password on a 4 x 4 grid. Id. at 3. “The
`drawing is mapped to a sequence of coordinate pairs by listing the cells in
`the order which the stylus passes through them, with a distinguished
`coordinate pair inserted in the sequence whenever the stylus is lifted from
`the drawing surface.” Id. at 6. The drawing in Figure 2 has the coordinate
`sequence (2, 2), (3, 2), (3, 3), (2, 3), (2, 2), (2, 1), (5, 5), with (5, 5) as the
`“pen up” indicator. Id. at 5.
`2. Claims 1, 14, and 15
`Petitioner asserts that Jermyn discloses or suggests each limitation of
`claim 1. Pet. 75–83. Petitioner relies on Dr. Bederson’s testimony to
`support its assertions. See id. Patent Owner disagrees, arguing, among other
`things, that Petitioner fails to show sufficiently that Jermyn discloses certain
`claim 1 limitations, including “a touch sensitive area in which a
`representation of a function is provided” and “wherein the representation
`consists of only one option for activating the function.” Prelim. Resp. 56–
`70. We focus our analysis on these limitations.
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`a. “a touch sensitive area in which a representation of a function
`is provided”
`As to the limitation “a touch sensitive area in which a representation
`of a function is provided,” Petitioner explains Jermyn discloses
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