IPR2021-00144 (’879 Patent)
`Bederson Decl. ISO Reply
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., AND APPLE INC.,
`
`Petitioners
`
`v.
`
`NEONODE SMARTPHONE LLC
`Patent Owner.
`
`Case IPR2021-00144
`U.S. Patent No. 8,095,879
`
`SUPPLEMENTAL DECLARATION OF DR. BENJAMIN B. BEDERSON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,095,879
`
`EXHIBIT 1051
` Samsung et al. v. Neonode
`IPR2021-00144
`Page 1
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`IPR2021-00144 (’879 Patent)
`Bederson Decl. ISO Reply
`
`TABLE OF CONTENTS
`
`2.
`
`3.
`
`Contents
`I.
`INTRODUCTION ........................................................................................... 4
`BACKGROUND AND QUALIFICATIONS ................................................. 4
`II.
`INFORMATION CONSIDERED ................................................................... 5
`III.
`IV. RELEVANT LEGAL STANDARDS ............................................................. 9
`V.
`SUMMARY OF MY OPINIONS ................................................................. 10
`VI. THE ’879 PATENT ....................................................................................... 11
`A.
`Priority Date ........................................................................................ 11
`B.
`Level of Ordinary Skill in the Art ....................................................... 11
`C.
`Claim Construction ............................................................................. 11
`VII. DETAILED EXPLANATION OF UNPATENTABILITY .......................... 12
`A.
`Claim 1 is Disclosed or at Least Rendered Obvious by
`Hirayama-307 (EX1006). .................................................................... 13
`1.
`Hirayama-307 Discloses Activation of a Function by a
`Multi-step Operation Including an “Object Gliding Along
`the Touch Sensitive Area Away From the Touched
`Location.” .................................................................................. 14
`Hirayama-307’s Operation Does Not Drag Icon 41 and is
`Not a “Drag-and-Drop” Operation. .......................................... 39
`Hirayama-307 Discloses, or At Least Renders Obvious,
`the Dialler Icon 41 is Not Relocated or Duplicated
`During the Gliding. ................................................................... 64
`Claim 1 is Obvious in View of the Combination of Hirayama-
`307 and Ren. ........................................................................................ 82
`Dependent Claims 6 and 15 Would Have Been Obvious. .................. 87
`1.
`Allard Discloses the “applications and files” of Claim 6. ........ 87
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`IPR2021-00144 (’879 Patent)
`Bederson Decl. ISO Reply
`2.
`Claim 15 is Obvious in View of Hirayama-307. ...................... 88
`VIII. SECONDARY CONSIDERATIONS OF NON-OBVIOUSNES ................ 89
`A. Neonode’s “Evidence” is Tied to Unclaimed Features or Runs
`Contrary to its Arguments. .................................................................. 91
`No Industry Praise for Claim 1. .......................................................... 94
`1.
`No Commercial Success. .......................................................... 96
`No “Licensing” Success. ..................................................................... 96
`C.
`IX. CONCLUSION .............................................................................................. 97
`
`
`
`B.
`
`
`
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`IPR2021-00144 (’879 Patent)
`Bederson Decl. ISO Reply
`I, Dr. Benjamin B. Bederson, declare as follows:
`
`1.
`
`I.
`
`INTRODUCTION
`2.
`I have been retained by Samsung Electronics Co., Ltd., Samsung
`
`Electronics America, Inc., and Apple Inc. (collectively, “Petitioners”) as an
`
`independent expert consultant in this inter partes review (“IPR”) proceeding
`
`before the United States Patent and Trademark Office (“PTO”).
`
`3.
`
`I have been asked by Petitioners’ counsel (“Counsel”) to consider
`
`whether certain references teach or suggest the features recited in Claims 1-6, and
`
`12-17 of U.S. Patent No. 8,095,879 (“the ’879 Patent”) (EX1001).
`
`4.
`
`I previously submitted a Declaration in this proceeding that I signed
`
`on November 5, 2020, and I understand that Declaration was marked as
`
`Exhibit 1002. That Declaration contained my opinions and the bases for them.
`
`Since submitting my Declaration (EX1002) I have considered the Board’s
`
`institution decision (Paper 24), Petitioners’ Request for Rehearing (Paper 25), the
`
`Board’s decision granting Petitioners’ Request for Rehearing (Paper 26), Patent
`
`Owner’s Response (Paper 37) and the exhibits identified therein, and the Second
`
`Declaration of Dr. Craig Rosenberg (EX2007) in support of Patent Owner’s
`
`Response. My opinions from my previous declaration have not changed.
`
`II. BACKGROUND AND QUALIFICATIONS
`5. My background and qualifications are set forth in my November 5,
`
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`IPR2021-00144 (’879 Patent)
`Bederson Decl. ISO Reply
`2020 declaration. I incorporate that section of my previous declaration here by
`
`reference.
`
`III.
`
`INFORMATION CONSIDERED
`6.
`In preparing this declaration, I have considered the materials
`
`discussed in this declaration, including, for example, the ’879 Patent, the
`
`references cited by the ’879 Patent, the prosecution histories of the ’879 Patent and
`
`the application from which it derives (including the references cited therein),
`
`various background articles and materials referenced in this declaration, and the
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`prior art references identified in this declaration. In addition, my opinions are
`
`further based on my education, training, experience, and knowledge in the relevant
`
`field.
`
`Exhibit No.
`1001
`1002
`1003
`1004
`
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`
`Description
`U.S. Patent No. 8,095,879 (“the ’879 patent”)
`Declaration of Benjamin B. Bederson
`File History for U.S. Patent No. 8,095,879
`Xiangshi Ren & Shinji Moriya, “Improving Selection on Pen-
`Based Systems: A Study of Pen-Based Interaction for Selection
`Tasks,” ACM Transactions on Computer-Human Interaction,
`Vol. 7, No. 3, September 2000, pp. 384-416 (“Ren”)
`U.S. Patent No. 5,249,296 (“Tanaka”)
`U.S. Patent No. 5,406,307 (“Hirayama307”)
`U.S. Patent No. 5,949,418 (“Shields”)
`CV of Benjamin B. Bederson
`U.S. Patent No. 6,100,878 (“Hirayama878”)
`U.S. Patent No. 5,615,384 (“Rubine ”)
`IBM Simon User’s Manual (1994)
`Andrew Sears, et al., “A new era for touchscreen applications:
`High precision, dragging icons, and refined feedback,”
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`1013
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`1023
`
`IPR2021-00144 (’879 Patent)
`Bederson Decl. ISO Reply
`ADVANCES IN HUMAN-COMPUTER INTERACTION, Vol. 3, R.
`Hartson, D. Hix, Ed. 1992 (“Sears”)
`U.S. Patent No. 5,463,725 (“Henckel”)
`Jermyn, et al., “The Design and Analysis of Graphical
`Passwords,” Proceedings of the 8th USENIX Security
`Symposium, Washington, DC, USA, August 23-26, 1999
`(“Jermyn”)
`Benjamin B. Bederson & James D. Hollan, Pad++: A Zooming
`Graphical Interface for Exploring Alternate Interface Physics,
`USIT ’94 Proceedings of the 7th Annual ACM Symposium on
`User Interface Software and Technology 17 (1994), DOI:
`http://dx.doi.org/10.1145/192426.192435
`David Rogers et al., Tossing Objects in a Desktop Environment,
`submitted to Conference on Human Factors in Computing
`Systems (1996)
`Benjamin B. Bederson, Fisheye Menus, UCIT ’00 Proceedings
`of ACM Conference on User Interface Software and Technology
`217 (2000), DOI: 10.1145/354401.317382
`Leslie E Chipman et al., SlideBar: Analysis of a Linear Input
`Device, 23 Behaviour & Info. Tech. 1 (2004), DOI:
`10.1080/01449290310001638487
`Hilary Browne et al., Designing a Collaborative Finger Painting
`Application for Children, HCIL-2000-17, CS-TR-4184,
`UMIACS-TR-2000-66 (Sept. 2000), available at
`https://hcil.umd.edu/pub-perm-link/?id=2000-17
`Pekka Parhi, Amy K. Karlson, and Benjamin B. Bederson. 2006.
`Target size study for one-handed thumb use on small touchscreen
`devices. In Proceedings of the 8th Conference on Human-
`Computer Interaction with Mobile Devices and Services
`(MobileHCI ’06). Association for Computing Machinery, New
`York, NY, USA, 203–210.
`DOI:https://doi.org/10.1145/1152215.1152260
`Karlson, Amy & Bederson, Benjamin & Contreras-Vidal, José.
`(2008). Understanding One-Handed Use of Mobile Devices.
`Handbook of Research on User Interface Design and Evaluation
`for Mobile Technology. 86-101. DOI:10.4018/978-1-59904-871-
`0.ch006
`Apple Newton Message Pad Handbook
`Microsoft Announces Broad Availability of Handheld PCs With
`
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`1024
`1025
`
`1026
`1027
`1028
`1029
`1030
`
`1031
`1032
`1033
`
`1034
`
`1035
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`1036
`
`1037
`
`1038
`
`1039
`
`1040
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`1041
`1042
`1043
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`IPR2021-00144 (’879 Patent)
`Bederson Decl. ISO Reply
`
`Windows CE, Nov. 19, 1996
`Palm Pilot 1000 Retrospective, March 27, 2006
`The Microsoft Tablet PC, A detailed look at Microsoft’s
`proposed Tablet PC
`Handbook for Palm m500 Series Handhelds (2001)
`Java History, Javapapers,
`AT&T EO 440 Personal Communicator, oldcomputers.net
`HP Jornada 520 Series Pocket PC User’s Guide (2001)
`“Product of the Month, BellSouth Cellular/IBM Release Simon
`PDA,” TELECOMMUNICATIONS, January 1994
`Declaration of Mr. Jacob Munford
`Trial Delay Statistics
`Order Governing Proceedings - Patent Case, Neonode
`Smartphone LLC v. Apple Inc., 6:20-cv-00505-ADA (W.D. Tex.
`Oct. 5, 2020)
`Order Governing Proceedings - Patent Case, Neonode
`Smartphone LLC v. Samsung Electronics Co. Ltd. and Samsung
`Electronics America, Inc., 6:20-cv-00507-ADA (W.D. Tex. Oct.
`5, 2020)
`Order Granting Motion Continue Case Management Conference
`(CMC), Neonode Smartphone LLC v. Apple Inc., 6:20-cv-
`00505-ADA (W.D. Tex. Oct. 27, 2020)
`Order Granting Motion Continue Case Management Conference
`(CMC), Neonode Smartphone LLC v. Samsung Electronics Co.
`Ltd. and Samsung Electronics America, Inc., 6:20-cv-00507-
`ADA (W.D. Tex. Oct. 7, 2020)
`Order Setting Markman Hearing, Neonode Smartphone LLC v.
`Apple Inc., 6:20-cv-00505-ADA (W.D. Tex. Oct. 26, 2020)
`Order Setting Markman Hearing, Neonode Smartphone LLC v.
`Samsung Electronics Co. Ltd. and Samsung Electronics America,
`Inc., 6:20-cv-00507-ADA (W.D. Tex. Oct. 26, 2020)
`November 5, 2020 Letter from Apple Counsel to Neonode
`Counsel
`November 5, 2020 Letter from Samsung Counsel to Neonode
`Counsel
`RESERVED
`RESERVED
`“Order Staying Case Pending Completion of Venue Discovery”
`filed 12/08/20 in Neonode Smartphone LLC v. Apple Inc., 6:20-
`
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`1044
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`1045
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`1046
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`1047
`1048
`1049
`1050
`1051
`1052
`1053
`1054
`1055
`1056
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`1057
`1058
`1059
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`1060
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`1061
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`1062
`1063
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`1064
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`1065
`1066
`1067
`1068
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`IPR2021-00144 (’879 Patent)
`Bederson Decl. ISO Reply
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`cv-00505 (W.D. Tex.)
`“Text Order GRANTING [36] Motion to Stay Case” filed
`12/11/20 in Neonode Smartphone LLC v. Samsung Electronics
`Co. Ltd. and Samsung Electronics America, Inc., 6:20-cv-00507
`(W.D. Tex.)
`“Plaintiff Neonode Smartphone LLC’s Unopposed Motion to
`Extend Venue Discovery Deadlines” filed 02/16/21 in Neonode
`Smartphone LLC v. Apple Inc., 6:20-cv-00505 (W.D. Tex.)
`“Amended Agreed Scheduling Order” filed 11/13/20 in Neonode
`Smartphone LLC v. Apple Inc., 6:20-cv-00505 (W.D. Tex.)
`Marked-Up version of Joint Protective Order
`Corrected Patent Owner’s Response – Redacted
`Redacted Exhibit 2026 Bystedt Declaration
`RESERVED
`Supplemental Declaration of Ben B. Bederson
`Supplement to File History for U.S. Patent No. 8,095,879
`Craig Rosenberg 5/20/2022 Deposition Transcript
`File History for U.S. Patent No. 8,812,993
`Declaration of Craig Rosenberg from IPR2021-00145
`Craig Rosenberg 11/17/2021 Deposition Transcript (IPR2021-
`00145)
`Magnus Goertz 6/2/2022 Deposition Transcript
`Thomas Eriksson 6/3/2022 Deposition Transcript
`Microsoft Windows, THE WINDOWS INTERFACE GUIDELINES – A
`GUIDE FOR DESIGNING SOFTWARE, February 1995
`James Friend Mac OS System 7 Emulator
`(https://jamesfriend.com.au/pce-js/)
`Wikipedia, Mac System 7
`(https://en.wikipedia.org/wiki/System_7)
`Wikipedia, Mac OS 8 (https://en.wikipedia.org/wiki/Mac_OS_8)
`Roman Loyola, Forget Monterey: System 7 and Mac OS 8 are
`now available for your M1 Mac, Macworld, April 4, 2022
`Juli Clover, Apple Releases macOS Monterey With AirPlay to
`Mac, Live Text, Safari Updates, Shortcuts App and More,
`MacRumors, Oct. 25, 2021
`Sony PalmTop PTC-500 Brochure – Certified Translation
`Sony PalmTop PTC-500 VHS Tape Cover
`Sony PalmTop PTC-500 Video – Part 1
`Sony PalmTop PTC-500 Video – Part 2
`
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`IPR2021-00144 (’879 Patent)
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`Sony PalmTop PTC-500 Video – Part 3
`Sony PalmTop PTC-500 Video – Part 4
`Sony PalmTop PTC-500 Video – Part 5
`Sony PalmTop PTC-500 Video – Part 6
`
`1069
`1070
`1071
`1072
`
`
`IV. RELEVANT LEGAL STANDARDS
`7.
`I set forth the relevant legal standards in my previous declaration, and
`
`I incorporate those legal standards here by reference.
`
`8.
`
`In addition, I understand from Counsel that a patentee may surrender
`
`certain claim scope through a clear and unmistakable disavowal in the prosecution
`
`history. However, I understand that the standards for finding disavowal are
`
`exacting. In particular, the disavowal must indeed by clear and unmistakable.
`
`9.
`
`I understand that, in order to satisfy the written description
`
`requirement of the patent statute, a patent must clearly allow persons of ordinary
`
`skill in the art to recognize that the inventor(s) actually possessed the invention as
`
`claimed. I understand that the purpose of the requirement is to ensure that the
`
`scope of the right to exclude does not overreach the scope of the inventor’s
`
`contribution to the field of art as described in the patent specification.
`
`10.
`
`I understand that the test for sufficiency is whether the specification’s
`
`disclosure reasonably conveys to those skilled in the art that the inventor had
`
`possession of the claimed subject matter as of the filing date. “Possession” means
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`possession as shown in the disclosure, and requires an objective inquiry into the
`
`four corners of the specification from the perspective of a person of ordinary skill
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`IPR2021-00144 (’879 Patent)
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`in the art. One shows that one is in possession of the invention by describing the
`
`invention, with all its claimed limitations, not that which merely makes it obvious.
`
`One does that by such descriptive means as words, structures, figures, diagrams,
`
`formulas, etc., that fully set forth the claimed invention. The specification does not
`
`need to describe the subject matter in exactly the same terms as used in the claims,
`
`but it must nonetheless contain a description of the claimed subject matter.
`
`V.
`
`SUMMARY OF MY OPINIONS
`11.
`I have been asked to consider whether the claims of the ’879 Patent
`
`are anticipated or obvious over certain prior art references. I understand from
`
`Counsel and the Board’s decision granting Petitioners’ Request for Rehearing that
`
`the Petitioners withdrew Grounds 1A-E, which was based on the Tanaka and Ren
`
`references, and Ground 3, which was based on the Jermyn reference. Paper 26, 9
`
`n.11. As explained in my previous declaration and in further detail in this
`
`declaration, it is my opinion that:
`
`
`
`
`
`
`
`
`
`The combination of Hirayama-307 and Ren renders claims 1, 2, 4, 5,
`14, 15, 16, 17 obvious.
`
`The combination of Hirayama-307, Ren, and Hirayama-878 renders
`claim 3 obvious.
`
`The combination of Hirayama-307, Ren and Allard renders claims 6
`and 13 obvious.
`
`The combination of Hirayama-307, Ren, and Henckel renders claim
`12 obvious.
`
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`IPR2021-00144 (’879 Patent)
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`
`VI. THE ’879 PATENT
`A.
`Priority Date
`12. For purposes of my analysis, I apply the date of filing of the
`
`application that issued as the ’879 patent, which is December 10, 2002. All of the
`
`prior art relied on in this declaration were published more than one year before the
`
`priority date I applied in my analysis. I understand Neonode has not alleged any of
`
`the prior art relied on for my opinions is not prior art.
`
`B.
`13.
`
`Level of Ordinary Skill in the Art
`I provided my opinion about a person of ordinary skill in the art
`
`(POSA) in my previous declaration, and I incorporate that opinion here by
`
`reference.
`
`C. Claim Construction
`14.
`I understand the claims of the ’879 Patent are to be interpreted
`
`according to the Phillips claim construction standard that is used to construe claims
`
`in a civil action. I understand from counsel that this includes construing the claim
`
`in accordance with the “ordinary and customary” meaning and scope of such claim
`
`as understood by one of ordinary skill in the art (a POSA) at the time of the
`
`invention.
`
`15.
`
`It is my understanding that the claim terms should be interpreted using
`
`their plain and ordinary meaning to one of ordinary skill in the art at the time of the
`
`invention, unless the inventor acted as his or her own lexicographer, coined new
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`IPR2021-00144 (’879 Patent)
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`terms or redefined a well-known term of art. I also understand that the claim
`
`language is to be viewed from the perspective of a person of ordinary skill in the
`
`art at the time of invention. I understand that the words in a claim are construed
`
`based on the “intrinsic evidence,” which includes the claim language, language in
`
`other claims of the patent in question or other patents in the same family, the
`
`specification, and the prosecution history including prior art cited in the
`
`prosecution history. I understand that “extrinsic evidence” is all the information
`
`that is not “intrinsic evidence,” including, for example, dictionaries, technical
`
`treatises, and expert testimony. I understand extrinsic evidence may be used to
`
`provide additional background for how a person of ordinary skill in the art would
`
`understand the claim terms.
`
`16. As stated in my previous Declaration, I do not believe that any
`
`explicit claim construction is required to resolve the validity issues for this
`
`Petition. I have considered Neonode’s arguments and Dr. Rosenberg’s opinions,
`
`and respond as follows.
`
`VII. DETAILED EXPLANATION OF UNPATENTABILITY
`17.
`I analyzed how claims 1-6, and 13-17 are obvious in view of the prior
`
`art in my previous declaration. I incorporate that analysis here by reference. In
`
`this declaration, I further address certain claim limitations and claim constructions
`
`that Neonode raised in its Response.
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`IPR2021-00144 (’879 Patent)
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`A. Claim 1 is Disclosed or at Least Rendered Obvious by Hirayama-
`307 (EX1006).
`In regard to claim 1, Hirayama-307 discloses, or at least renders
`
`18.
`
`obvious, challenged claim 1. Alternatively, Hirayama-307 in combination with
`
`Ren renders challenged claim 1 obvious.
`
`19. A POSA would have recognized that Hirayama-307 discloses a
`
`function, such as display of a dialler processing menu, is activated by a multi-step
`
`operation including an “object gliding … away from the touched location.” For
`
`example, Hirayama-307 plainly states “the user can activate or deactivate the
`
`designated function only by dragging the pen 3.” EX1006, 7:9-10. Neonode’s
`
`arguments that the “gliding … away” phrase in the claim must be narrowed to
`
`exclude “drag-and-drop” operations is based on a flawed interpretation of the
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`prosecution history, and a flawed characterization of Hirayama-307 as a “drag-and-
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`drop” operation.
`
`20. A POSA would have also recognized that Hirayama-307 discloses, or
`
`at least renders obvious, that dialer icon 41 is “not relocated or duplicated during
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`the gliding” of the multi-step operation of claim 1. Neonode’s arguments to the
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`contrary repeat the same flawed application of “drag-and-drop” to Hirayama-307,
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`and rely on unsupported speculation by Dr. Rosenberg as to how a POSA would
`
`understand Hirayama-307’s disclosure.
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`IPR2021-00144 (’879 Patent)
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`1. Hirayama-307 Discloses Activation of a Function by a
`Multi-step Operation Including an “Object Gliding Along
`the Touch Sensitive Area Away From the Touched
`Location.”
`21. Neonode appears to not dispute that Hirayama-307 discloses the plain
`
`language of the claimed multi-step operation. Namely, Hirayama-307 discloses
`
`that a function, such as the opening of a dialler processing menu, is activated by a
`
`multi-step operation comprising (i) a pen (object) touching the touch sensitive area
`
`at a location where the dialler icon 41 (representation of the function) is provided
`
`in icon area 40 (EX1006, 4:61-65 (“the user touches an icon 41 on which a picture
`
`of a telephone is drawn … with the point of the pen 3”), FIG. 4A (at steps S1, S2),
`
`5:26-31), and then (ii) the pen (object) gliding along the touch sensitive area away
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`from the touched location. Id., 5:3-12 (“[T]hen, if the user moves (i.e. drags) the
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`point of the pen 3 to the display position on the surface of the input tablet 2 without
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`being separated therefrom after having touched the desired icon 41 with the point
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`of the pen 3, and takes the point of the pen 3 off from the surface of the input tablet
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`2, an icon (hereinafter be referred to as a window) enlarged in the form of the
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`processing display mode of the desired icon 41 is automatically displayed … .”),
`
`FIGs. 3A-3B, 4A (steps S4, S6, S9), 5:39-44.
`
`22. The only distinction that Neonode’s expert articulates between “the
`
`claimed ‘gliding … away’ gesture and a drag-and-drop operation” is that, “[i]n a
`
`drag-and-drop operation, the user generally perceives some form of an
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`IPR2021-00144 (’879 Patent)
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`object/function as behaving as if it is being dragged by the movement of the
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`stylus/pen.” EX2007, ¶67 (emphasis added). But Dr. Rosenberg provides no basis
`
`in the art for this distinction, much less how a POSA would identify or measure the
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`perception of the user in order to distinguish between a “glide” and a “drag-and-
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`drop.”
`
`23. As I will describe in greater detail below, in comparing and
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`distinguishing a “glide” from a “drag-and-drop,” Dr. Rosenberg assumes that these
`
`two concepts are mutually exclusive, but they are not. The claimed “gliding …
`
`away” focuses on how and where an object interacts with the touch sensitive area,
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`whereas the description Dr. Rosenberg provides for a “drag-and-drop” is actually
`
`about how the handheld computer reacts to that interaction. Indeed, the “gliding
`
`… away” language of the claim does not require the pen/finger glide away from
`
`the representation of the function, but rather “away from the touched location” on
`
`the touch sensitive area. Neonode’s expert appears to either agree or have no
`
`opinion. EX1053, Rosenberg Tr., 82:1-85:19. In other words, the claims describe
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`the “multi-step operation” in terms of how and where the object (i.e., pen/finger)
`
`touches the touch sensitive area of the user interface, not in terms of how the user
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`interface reacts to that interaction. The reaction of the user interface is captured in
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`a separate “wherein” clause, which independently requires that “the representation
`
`of the function is not relocated or duplicated during the gliding.” To adopt Dr.
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`IPR2021-00144 (’879 Patent)
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`Rosenberg’s vague distinction between “gliding” and “drag-and-drop” would be to
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`render this separate “wherein” clause superfluous. Accordingly, regardless of
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`whether Hirayama-307’s icon 41 is moved with the pen during the gliding action
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`(which it is not), the pen still moves away from the originally touched location in
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`the hatched icon group area 40 and therefore discloses the claimed multi-step
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`operation.
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`24. Rather than address the language of the claim, Neonode argues that
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`the applicant “made abundantly clear that ‘gliding … away’ is distinct from ‘drag-
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`and-drop’ operations” during prosecution of the ’879 patent (Resp. 20-25), and that
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`“Hirayama-307’s operation is a ‘conventional’ drag-and-drop ‘operation
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`referenced by the Applicant during prosecution.” Resp., 26-28 (quoting
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`Rosenberg, EX2007, ¶¶59, 61-64). I disagree for multiple reasons.
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`a. Neither the Claims nor the Specification Exclude
`Neonode’s Version of “Drag-and-Drop” from the
`Claimed “Gliding … Away.”
`25. Dr. Rosenberg opines that, “[i]n a drag and drop operation, the user
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`generally perceives some form of an object/function as behaving as if it is being
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`dragged by the movement of the stylus/pen,” and that “[s]ometimes,” but not
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`necessarily, “an operating system provides visual feedback by actually showing the
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`object moving on the screen together with the stylus/pen.” EX2007, ¶67. But the
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`“gliding … away” language of the claim and also the disclosure in the specification
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`IPR2021-00144 (’879 Patent)
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`do not address either of these features.
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`26. Claim 1 recites that “the function is activated by a multi-step
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`operation comprising (i) an object touching the touch sensitive area at a location
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`where the representation is provided and then (ii) the object gliding along the touch
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`sensitive area away from the touched location.” The “operation” refers to the
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`action of the “object,” which can be a finger or pen.1 EX1001, 6:11-15. This
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`language in the claim, however, does not tell the reader either (1) the operation of
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`the underlying system (other than that the function is activated) or the intended
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`perception of the user, or (2) the operation of the touch sensitive area or display
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`(nor does the claim affirmatively recite a display), such as how the representation
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`of the function responds (if at all) to the gliding of the pen/finger.
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`27. As I noted above, in light of its articulation in the claim and associated
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`description in the specification, a POSA would have understood the claimed multi-
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`step operation in terms of how a user physically interacts with the mobile handheld
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`computer unit, and not what is displayed by the user interface in response. This is
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`consistent with the specification of the ’879 patent. Dr. Rosenberg acknowledges
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`
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` 1
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` I will use “pen/finger” rather than “object” in this discussion because the term
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`“object” may be mistakenly confused with an object on the screen, such as the
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`representation of the function.
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`IPR2021-00144 (’879 Patent)
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`that the claimed multi-step operation is described with respect to Figure 2 of the
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`’879 Patent. EX2007, ¶42. Figure 2 of the ’879 patent illustrates how the user’s
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`finger physically interacts with the touch sensitive area 1, and not what is
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`displayed on the user interface in response. See EX1001, FIG. 2, 4:7-11. The
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`mobile handheld computer unit’s reaction to the multi-step gesture (i.e., what is
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`displayed on the user interface after the multi-step gesture) is shown in Figures 3,
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`5, and 6. See EX1001, 4:12-33(“FIG. 3 shows that if the first function 21 is
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`activated, then the display area 3 is adapted to . . .”), 4:36-5:2 (“FIG. 5 shows that
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`if the second function 22 is activated, then the display area 3 is adapted to . . .”).
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`28. Because the claimed “gliding . . . away” is defined purely in terms of
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`where and how a user interacts with the touch sensitive area, a POSA would have
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`understood that, in the context of touchscreen displays, “gliding … away” is often
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`a constituent part of a “drag and drop” operation. “Dragging” and “dropping” are
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`functions of the UI that might be executed in response to the user’s physical
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`interaction with the touch sensitive area. A system may execute “dragging” and/or
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`“dropping” functions based on a user “touching” and “gliding” on the touchscreen
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`area, or it may implement other functions. Importantly, though, the concepts are
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`not counter to one another, and there is no evidence on this record that they should
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`be.
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`29. A POSA would have further appreciated that drag-and-drop
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`operations include specific programming of the underlying system, including
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`defining items as a source/selection, and defining items as a target/destination that
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`deal with receiving the source via the “drop,” and programming for visually
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`dragging a source item with a mouse/pen/finger as it moves across the display.
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`See, e.g., EX1059, The Windows Interface Guidelines, 74-75 (“How the
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`transferred object is integrated and displayed in the drop destination is determined
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`by the destination’s context”), 221 (“When the user drags a selection into a
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`container, the container application can interpret the operation using information
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`supplied by the source”). But none of these aspects are included in the “gliding …
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`away” language of the claim. Notably, the clause in claim 1 following the “gliding
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`… away” phrase does tell the reader what happens to the “representation of the
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`function” during the gliding: “the representation of the function is not relocated or
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`duplicated during the gliding.” But this is not in the “gliding … away” language
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`Neonode relies on to exclude “drag-and-drop” operations. Thus, a POSA would
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`not read the plain language of the “gliding … away” phrase in the claim as
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`excluding a “drag-and-drop” operation. Indeed, the plain language of the “gliding
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`… away” limitation would encompass a drag-and-drop operation, because such an
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`operation would include a pen/finger touching down on the source and dragging
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`their pen/finger away from the touched location.
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`30. Similarly, the specification of the ’879 patent does not disclaim or
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`exclude Neonode’s version of a “drag-and-drop” operation. Resp. 23. Like the
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`claim, the specification only references (1) the action of the pen/finger, and (2) that
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`activation of the function occurs in response to a gesture that includes movement
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`of a pen/finger along the touch sensitive area: “FIG. 2 shows that any one of these
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`three functions 21, 22, 23 can be activated when the touch sensitive area 1 detects a
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`movement of an object 4 with its starting point A within the representation of a
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`function on the menu area 2 and with a direction B from the menu area 2 to the
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`display area 3.” EX1001, 4:7-11, FIG. 2. The specification provides no flow
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`charts or description of the programming for the user interface during the gesture
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`of FIG. 2 that would inform a POSA that Neonode’s version of a “drag-and-drop”
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`operation was outside the scope of the alleged invention. Dr. Rosenberg appears to
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`agree the action of the finger shown in FIG. 2 is consistent with the action of the
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`user’s finger for a drag-and-drop operation, such as dragging a file icon to a
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`trash/delete icon. EX2007, ¶65 (“‘gliding … away’ and a drag-and-drop gesture
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`… may have overlapping movements”), and that the reader must understand the
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`operation of the system, which is not shown in FIG. 2, to conclude whether the
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`action in FIG. 2 is a “drag-and-drop.” EX1053, 34:8-36:14. The specification,
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`however, does not tell the reader anything about what happens to the
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`“representations” of functions 21, 22, and 23 during the movement shown in FIG.
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`2. Thus, there is no reason to conclude that the specification excludes a “drag-and-
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`drop” operation as Neonode argues.
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`b. Dr. Rosenberg’s Definition of “Drag-and-Drop” is
`Wrong.
`31. Dr. Rosenberg opines that, “[i]n a drag and drop operation, the user
`
`generally perceives some form of an object/function as behaving as if it is being
`
`dragged by the movement of the stylus/pen,” and that “[s]ometimes,” but not
`
`necessarily, “an operating system provides visual feedback by actually showing the
`
`object moving on the screen together with the stylus/pen.” EX2007, ¶67. Dr.
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`Rosenberg also explains in reference to Hirayama-307 that “some form of
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`Hirayama-307’s dialing application is logically drag