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
`_____________
`
`PETITIONERS’ REPLY
`TO PATENT OWNER’S RESPONSE
`
`
`____________
`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
`_____________
`
`PETITIONERS’ REPLY
`TO PATENT OWNER’S RESPONSE
`
`
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`
`I.
`
`TABLE OF CONTENTS
`GROUND 2 INVALIDATES THE CHALLENGED CLAIMS .................... 1
`A. Hirayama-307 Discloses or Renders Obvious Claim 1. ....................... 1
`1.
`Hirayama-307 Discloses “Gliding … Away.” ............................ 1
`a)
`The Specification Does Not Exclude Neonode’s
`“Drag-and-Drop.” ............................................................. 3
`Dr. Rosenberg’s Definition of “Drag-and-Drop” is
`Wrong ............................................................................... 4
`Arguments and Amendments in Prosecution Did
`Not Exclude “Drag-and-Drop.” ........................................ 5
`Hirayama-307 Does Not Drag Icon 41, is Not a “Drag-
`and-Drop” Operation. ................................................................. 9
`a)
`Hirayama-307’s FIG. 4A Flowchart and
`Description Disclose the Claim. ..................................... 10
`Dr. Rosenberg’s Characterization of Hirayama-
`307’s FIGs. 3A-3B are Incorrect. ................................... 15
`Hirayama-307, Considered as a Whole, Discloses
`or Renders Obvious Claim 1. ......................................... 17
`Hirayama-307’s Operation is Not “Drag-and-
`Drop,” and Is Indistinguishable From the ’879
`Specification, Neonode N1/N2. ...................................... 18
`Hirayama-307 Discloses, or At Least Renders Obvious,
`the Dialler Icon 41 is Not Relocated or Duplicated
`During the Gliding. ................................................................... 21
`Claim 1 is Obvious in View of the Combination of Hirayama-
`307 and Ren. ........................................................................................ 26
`Allard Discloses Claim 6. .................................................................... 28
`Claim 15 is Obvious in View of Hirayama-307. ................................ 28
`
`C.
`D.
`
`2.
`
`3.
`
`B.
`
`b)
`
`c)
`
`b)
`
`c)
`
`d)
`
`i
`
`
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`SECONDARY CONSIDERATIONS ........................................................... 29
`A. Neonode’s “Evidence” Lacks Nexus. ................................................. 29
`B.
`No Industry Praise. .............................................................................. 31
`C.
`No Presumption of Nexus. .................................................................. 32
`D. No Commercial Success ...................................................................... 33
`E.
`No “Licensing” Success. ..................................................................... 33
`
`
`II.
`
`
`
`ii
`
`
`
`Exhibit No.
`1001
`1002
`1003
`1004
`
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`
`1013
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`
`EXHIBITS
`
`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,”
`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
`
`iii
`
`
`
`1019
`
`1020
`
`1021
`
`1022
`1023
`
`1024
`1025
`
`1026
`1027
`1028
`1029
`1030
`
`1031
`1032
`1033
`
`1034
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`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
`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)
`
`iv
`
`
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`1042
`1043
`
`1044
`
`1045
`
`1046
`
`1047
`1048
`1049
`1050
`1051
`1052
`1053
`1054
`1055
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`Order Granting Motion Continue Case Management Conference
`(CMC), Neonode Smartphone LLC v. Apple Inc., 6:20-cv-
`00505-ADA (W.D. Tex. Oct. 7, 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-
`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
`
`v
`
`
`
`1056
`
`1057
`1058
`1059
`
`1060
`
`1061
`
`1062
`1063
`
`1064
`
`1065
`1066
`1067
`1068
`1069
`1070
`1071
`1072
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`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
`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
`
`
`vi
`
`
`
`I.
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`GROUND 2 INVALIDATES THE CHALLENGED CLAIMS
`A. Hirayama-307 Discloses or Renders Obvious Claim 1.
`Neonode contends Hirayama-307 (1) does not disclose “gliding … away,”
`
`and (2) does not disclose or render obvious “the representation of the function is
`
`not relocated or duplicated during the gliding.” At heart, both arguments are the
`
`same, were rejected by the Board in its institution decision, and are wrong for
`
`reasons explained below. EX1051, ¶¶19-20.
`
`1. Hirayama-307 Discloses “Gliding … Away.”
`As addressed in the Petition, Hirayama-307 discloses that a function, such as
`
`the opening of a dialler application, is activated by a multi-step operation
`
`comprising:
`
`1) a pen (object) touching the touch sensitive area at a location where dialler
`
`icon 41 (representation of the function) is provided in icon area 40
`
`(EX1006, 4:61-65, FIG. 4A (S1, S2), 5:26-31), and then
`
`2) the pen (object) gliding along the touch sensitive area away from the
`
`touched location. Id., 5:3-12, FIGs. 3A-3B, 4A (S4, S6, S9), 5:39-44;
`
`Pet., 58-62; EX1051, ¶21.
`
`Accordingly, Hirayama-307 discloses the plain language of the “gliding … away
`
`from the touched location” limitation. EX1051, ¶19. Undeterred, Neonode uses
`
`this limitation as a hook to impose an additional, unrelated limitation on the claim:
`
`that the claim excludes any and all “drag-and-drop” operations. Resp., 19-20.
`
`1
`
`
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`The only distinction 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 object/function as
`
`behaving as if it is being dragged by the movement of the stylus/pen.” EX2007,
`
`¶671. EX1051, ¶22.
`
`Dr. Rosenberg incorrectly assumes a “glide” and “drag-and-drop” are
`
`mutually exclusive. The claimed “gliding … away” focuses on how and where a
`
`pen/finger interacts with the touch sensitive area, whereas “drag-and-drop” is about
`
`how the system reacts to that interaction. Indeed, the “gliding … away” claim
`
`language does not require the pen/finger glide away from the representation of the
`
`function, but rather “away from the touched location.” EX1053, 82:1-85:19
`
`(agreeing, or has not formed an opinion). In other words, the claimed “multi-step
`
`operation” addresses how and where the pen/finger touches the touch sensitive
`
`area, not how the user interface reacts to that interaction. The reaction of the
`
`interface is captured in a separate “wherein” clause, which independently requires
`
`that “the representation of the function is not relocated or duplicated during the
`
`gliding.” Adoption of Dr. Rosenberg’s vague distinction between “gliding” and
`
`“drag-and-drop” would render this separate “wherein” clause superfluous.
`
`
`
` 1
`
` Emphasis added throughout, unless otherwise noted.
`
`2
`
`
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`Accordingly, regardless of whether Hirayama-307’s icon 41 is dragged with the
`
`pen (it is not), the pen still moves away from the originally touched location and
`
`discloses the claimed multi-step operation. EX1051, ¶23.
`
`a)
`
`The Specification Does Not Exclude Neonode’s
`“Drag-and-Drop.”
`The specification of the ’879 patent does not disclaim or exclude a “drag-
`
`and-drop” operation (Resp. 23). Thorner v. Sony Computer Entertainment
`
`America LLC, 669 F. 3d 1362, 1365-67 (Fed. Cir. 2012). The claimed multi-step
`
`operation is described with respect to Figure 2 (EX2007, ¶42), which illustrates
`
`how the user’s finger physically interacts with the touch sensitive area 1, and not
`
`what is displayed on the user interface in response. See EX1001, FIG. 2, 4:7-11.
`
`The device’s reaction to the multi-step gesture (i.e., what is displayed on the user
`
`interface after the multi-step gesture) is shown in Figures 3, 5, and 6. See EX1001,
`
`4:12-33, 4:36-5:2. EX1051, ¶¶26-28.
`
`A POSA would have appreciated that drag-and-drop operations include
`
`specific programming of the underlying system (see §I.A.1.b), but none of those
`
`programming aspects are referenced by the “gliding … away” language of the
`
`claim or the specification. There are no flow charts or description that would
`
`exclude a “drag-and-drop,” and the specification tells the reader nothing about
`
`what happens to the “representations” of functions 21-23 during that movement.
`
`EX1053, 34:8-36:14. EX1051, ¶¶29-30.
`
`3
`
`
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`b) Dr. Rosenberg’s Definition of “Drag-and-Drop” is
`Wrong
`Dr. Rosenberg incorrectly defines “drag-and-drop” as follows (EX1051,
`
`¶31):
`
` “[T]he 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 “[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.
`
` In reference to Hirayama-307, “some form of Hirayama-307’s dialing
`
`application is logically dragged (and behaves as if it is being logically
`
`dragged) with the movement of the stylus, and is dropped at the
`
`location where the stylus leaves the screen.” EX2007, ¶61.
`
`Initially, Dr. Rosenberg’s declaration leaves unclear what constitutes a
`
`“drag-and-drop” operation. What is the “form of an object/function?” What does
`
`it mean for something to “behav[e] as if it is being dragged” or “logically
`
`dragged”? These are not terms of art. Nor does Dr. Rosenberg point to any
`
`supporting literature. EX1051, ¶32. The Board should therefore disregard his
`
`opinions about the meaning of “drag-and-drop.” EX2013, ¶¶38-43; Network
`
`Commerce, Inc. v. Microsoft Corp., 422 F.3d 1353, 1361 (Fed. Cir. 2005) (expert
`
`testimony unsupported by industry publications or other independent sources is not
`
`4
`
`
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`
`useful).
`
`The definition also mistakenly conflates the action of the pen/finger with
`
`what happens on the display and in the programming as a result of that action.
`
`EX1051, ¶33; see §I.A.1.
`
`A POSA would have understood drag-and-drop operations to include
`
`specific programming of the underlying system to define items as a
`
`source/selection objects, and target/destination objects that receive the source via
`
`the “drop.” EX1059, 74-75 (“How the transferred object is integrated and
`
`displayed in the drop destination is determined by the destination’s context”), 221-
`
`222. But this is nowhere in Dr. Rosenberg’s definition. EX1051, ¶34-35.
`
`Also, Dr. Rosenberg’s opinions that Hirayama-307 is a “drag-and-drop”
`
`operation conflict with his opinions that Neonode’s devices embody claim 1. See
`
`§I.A.2.d.
`
`c)
`
`Arguments and Amendments in Prosecution Did Not
`Exclude “Drag-and-Drop.”2
`The file history does not support Neonode’s argument that “‘gliding …
`
`
`
` 2
`
` The examiner’s citation to Hirayama-307 as “pertinent to applicant’s disclosure”
`
`is irrelevant to the Petition’s challenges. EX1052, 217, 257; Pet., 85-86; EX1051,
`
`¶91-94.
`
`5
`
`
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`away’ does not encompass a drag-and-drop operation.” EX2007, ¶¶54-57; Resp.,
`
`20-21. Neonode’s Response misrepresents Hoshino’s disclosure and applicant’s
`
`related arguments. Resp. 28-30. Rather, the applicant distinguished Hoshino’s
`
`function activation as “solely in response to a push-in operation … and not in
`
`response to a drag operation.” EX1003, 169-171. EX1051, ¶36.
`
`In rejecting then-pending claim 1, the examiner described Hoshino as
`
`requiring “a push in operation” to activate a function. EX1003, 179-180.
`
`EX1003, 180 (highlighted)
`
`
`
`In all of Hoshino’s examples, the dragging operation alone is insufficient to
`
`activate the function. Key to the applicant’s response was the “combination with a
`
`push in operation for activating a function,” which Neonode’s Response wholly
`
`ignores. EX1051, ¶¶37-42.
`
`Quoting Hoshino’s paragraph [0092], the applicant specifically referred to
`
`the pushing force necessary to activate the function in attempting to distinguish the
`
`claim language from Hoshino. EX1003, 169.
`
`6
`
`
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`
`
`
`EX1003, 170 (highlighted)
`Summarizing the “salient distinctions between the claimed invention and
`
`Hoshino,” the applicant emphasized the necessary pressure sensor in Hoshino’s
`
`device to detect the “hard touch” pressure greater than P2. The primary distinction
`
`was “function activation” occurring in Hoshino “[i]n response to a hard touch:”
`
`EX1003, 170 (annotated).
`Thus, the distinction made with regard to the claim language was that the
`
`
`
`7
`
`
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`claimed function activation occurs in response to “(1) touch, followed by (2) a
`
`glide,” whereas Hoshino’s function activation requires a separate and distinct “hard
`
`touch” or “push-in.” The applicant did not disclaim or disavow “drag-and-drop”
`
`operations in general. EX1051, ¶¶43-46; Omega Engineering, Inc v. Raytek Corp.,
`
`334 F. 3d 1314, 1324 (Fed. Cir. 2003).
`
`The additional excerpt of the file history Neonode relies on also does not
`
`disavow general “drag-and-drop” operations (Resp., 20-21):
`
`
`
`EX1003, 171.
`First, the applicant did not distinguish the claim language at issue, i.e.,
`
`“gliding … away from the touched location,” and instead stated “gliding away
`
`from an icon.” Resp., 20 (quoting EX1003, 171). Second, the applicant contrasted
`
`Hoshino’s “drag-and-drop operation for moving an icon.” EX1003, 171 (italics
`
`added). Third, the applicant was arguing against the modification of Nakajima in
`
`8
`
`
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`view of Hoshino’s moving icons—“[i]t is not possible to move the icons of
`
`Nakajima.” EX1003, 171. Thus, at best, the applicant distinguished an operation
`
`in which the icon is visually moved with the finger to a new location. This is not a
`
`disavowal of Dr. Rosenberg’s “drag-and-drop” in which the icon is not visually
`
`dragged with the finger/pen. EX2007, ¶¶57, 59-61. EX1051, ¶¶49-53.
`
`The claim amendments in the file history also do not amount to disclaimer.
`
`Resp., 23-24 (citing Rosenberg, EX2007, ¶¶54-57). The language deleted from the
`
`claim does not reflect a “drag-and-drop” operation allegedly abandoned with the
`
`amendment. EX1003, 326; EX1053, 138:20-140. EX1051, ¶¶55-56. Indeed, the
`
`Examiner’s later amendment—adding that “the representation of the function is
`
`not relocated or duplicated during the gliding”—informs a POSA that the examiner
`
`did not view the “gliding … away from the touched location” limitation to require
`
`the pen/finger glide away from the representation of the function. See, e.g.,
`
`EX1053, 77:20-78:5, 78:20-79:13; EX1003, 34; EX1051, ¶57-59.
`
`2. Hirayama-307 Does Not Drag Icon 41, is Not a “Drag-and-
`Drop” Operation.
`Even if the file history excluded “drag-and-drop” operations from claim 1 (it
`
`does not), Hirayama-307’s operation is not a “drag-and-drop” operation for
`
`multiple reasons (Resp., 26-31; EX2007, ¶¶59-67). EX1051, ¶60.
`
`9
`
`
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`a) Hirayama-307’s FIG. 4A Flowchart and Description
`Disclose the Claim.
`A POSA would have understood Hirayama-307 to disclose, or at least render
`
`obvious, the representation of the function (dialler icon 41) is not “dragged” during
`
`the gliding action of the pen. EX1006, 4:61-65, 5:3-12, FIGs. 3A-3B, 4A, 5:26-44;
`
`Pet., 54-62. EX1051, ¶64.
`
`Dr. Rosenberg’s interpretation that the user “drags the icon outside of the
`
`hatched area” is based largely on the language in the summary of Hirayama-307
`
`for “a first aspect of the present invention” (addressed below). EX2007, ¶59
`
`(citing EX1006, 2:5-13). However, the detailed disclosure of the operation of
`
`Hirayama-307’s interface, including the flow chart of FIG. 4A, discloses the multi-
`
`step operation of challenged claim 1 and informs a POSA that the dialler icon 41 is
`
`not moved with the gliding of the pen. EX1051, ¶¶61-62.
`
`10
`
`
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`
`
`
`EX1006, FIG. 4A (annotated)
`Hirayama-307 discloses: “[i]f the pen 3 is placed down within the area of
`
`the icon group 40 as represented by a YES at step S2,” then at step S4 “it is
`
`determined whether or not the pen coordinate is shifted from a designated value by
`
`a large amount.” EX1006, 5:29-44, FIG. 4A. These are steps (i) and (ii) of the
`
`claimed multi-step operation.
`
`If the answer is “YES at step S4, then” in step S6, the window 43 (see FIG.
`
`3B) corresponding to the dialler icon 41 (touched in step S2) is displayed.
`
`11
`
`
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`EX1006, 5:63-66. During the shifting/gliding of the pen in step S4 there is no
`
`movement or dragging of icon 41. Indeed, FIG. 3B shows icon 41 unmoved and
`
`unduplicated in the same location as before window 43 is displayed (i.e., the same
`
`location as in FIG. 3A). EX1006, 6:3-6, 6:16-21, FIG. 4A, FIG. 3B. EX1051,
`
`¶¶63-64.
`
`As Dr. Bederson explains, a POSA would have recognized that
`
`implementation of Hirayama-307’s flowchart of FIG. 4A and its corresponding
`
`description—as they are explicitly presented in the reference—would have
`
`practiced claim 1. Neither the flowchart of FIG. 4A nor the corresponding
`
`description tell a POSA to relocate, duplicate, or otherwise drag icon 41 during the
`
`movement of the pen. Notably, a POSA would have recognized that Hirayama-
`
`307 expressly teaches when to move/drag the window 43 (in orange at S8, above),
`
`which is not a relocation or duplication of icon 41. EX1006, FIG. 4A, 6:7-14;
`
`EX1053, 94:10-95:12 (agreeing window 43 is not a duplication of icon 41). In
`
`other words, Hirayama-307’s FIG. 4A expressly illustrates and describes visual
`
`movements of interface elements when it intends for the system to provide for such
`
`movement, leaving a POSA to assume that where no such movement is described,
`
`none should be implemented. A POSA would have therefore recognized that
`
`Hirayama-307’s flowchart at FIG. 4A and corresponding description teaches a
`
`POSA to not move the dialler icon 41 with movement of the pen in step S4 and
`
`12
`
`
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`instead that icon 41 should remain stationary. Had Hirayama-307 intended
`
`otherwise, a POSA would have expected to see a rectangular box between steps S2
`
`and S4 labeled “Move the icon,” like shown in step S8. EX1051, ¶65.
`
`Hirayama-307 further discloses that shift determination in step S4 is done
`
`“by comparing the shifted amount of the pen coordinate with a reference shift
`
`amount stored in the memory … .” EX1006, 5:41-52. These “shift” amounts
`
`could be designated by x, y coordinates. FIG. 3A informs a POSA that a
`
`“sufficiently large amount” would be greater than that shown along the arrow
`
`because the figure shows the user glides their pen from icon 41 along the path of
`
`the arrow (arrow in original, emphasized in red) to the position of cursor 42, but
`
`the window 43 has not yet been displayed per step S6. A designer might program
`
`the y shift amount to be greater than the depth b of the hatched area:3
`
`
`
` 3
`
` This is an oversimplification for illustration.
`
`13
`
`
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`
`
`
`EX1006, FIG. 3A (annotated)
`In comparison, FIG. 3B (although patent drawings are not presumed to be drawn to
`
`scale) instructs a POSA that the pen shifted an amount (indicated in purple)
`
`greater than the programmed y distance because window 43 was displayed and
`
`activated (step S9). FIG. 4A. EX1051, ¶¶66-67.
`
`14
`
`
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`
`
`
`EX1006, FIG. 3A, 3B (annotated)
`Dr. Rosenberg relies on Hirayama-307’s alternative for step S4 in which it is
`
`determined whether the x, y coordinate of the pen has shifted outside the x, y
`
`coordinates of the hatched area. EX1006, 5:61-63, 5:48-53. But nothing about this
`
`alternative instructs a POSA that icon 41 is dragged during movement of the pen.
`
`EX1051, ¶68-69.
`
`b) Dr. Rosenberg’s Characterization of Hirayama-307’s
`FIGs. 3A-3B are Incorrect.
`As discussed above and below, Dr. Rosenberg’s dismissal of Hirayama-
`
`307’s FIG. 3A as representing “the state of the device before icon 41 is being
`
`dragged” is wrong. EX2007, ¶80. The only reason to show the curved arrow in
`
`FIG. 3A is to illustrate the movement of the pen described in the corresponding
`
`text. EX1006, 4:61-5:7. A similar arrow illustrating the pen’s path is also shown
`
`in FIG. 3B. Even if FIG. 3A shows what Dr. Rosenberg suggests and the arrow is
`
`ignored, it does not disclose that icon 41 is dragged during movement of the pen.
`
`15
`
`
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`
`EX1051, ¶¶70-74.
`
`Moreover, a cursor was a well-known way to provide a user with feedback
`
`as to the location of their finger or pen during a drag/glide movement. See, e.g.,
`
`EX1012, 17, 19; Pet., 60-62. This is consistent with Hirayama-307’s illustration of
`
`cursor 42 and desire for the user to drag the pen to a position they can clearly
`
`designate for opening of the window. EX1006, 7:16-24. Hirayama-307’s FIG. 3B,
`
`which shows cursor 42 (in green) when the user wants to bring window 43 back
`
`to icon area 40, also confirms Petitioners are correct. EX1006, 6:22-24.
`
`EX1006, FIG. 3B (annotated)
`FIG. 3B shows the point of the pen, its position designated by cursor 42, gliding
`
`along the path of the arrow (emphasized in red) toward icon group 40. EX1006,
`
`
`
`16
`
`
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`6:24-31, FIG. 3B; see also EX2007, ¶76. Thus, in the same way FIG. 3B shows
`
`the cursor 42 and the arrow path of the pen during the gliding from the window
`
`hatched portion 44, FIG. 3A shows the cursor 42 and arrow path of the pen
`
`during the gliding away from icon 41. See §I.A.2.a, annotated FIG. 3A. EX1051,
`
`¶¶75-77.
`
`Hirayama-307’s claim 2 also teaches a POSA to perform the processing
`
`when the pen is close to the panel surface, in which case cursor 42 is needed to
`
`indicate the position of the pen. EX1006, 7:58-8:3. EX1051, ¶78.
`
`Thus, Hirayama-307’s cursor 42 provides feedback to the user for the pen’s
`
`gliding action . Pet., 60-62. If the icon is dragged during gliding of the pen as
`
`Neonode suggests, there would be no reason to also display cursor 42—but the
`
`detailed disclosure of Hirayama-307 instructs that cursor 42 provides the feedback,
`
`not dragging of the icon.
`
`c) Hirayama-307, Considered as a Whole, Discloses or
`Renders Obvious Claim 1.
`As described above, the summary of Hirayama-307—on which Dr.
`
`Rosenberg heavily relies—describes only “a first aspect of the present invention”
`
`(EX1006, 1:64), and Hirayama-307 as a whole discloses challenged claim 1.
`
`Petitioners need not show that every embodiment in Hirayama-307 does not drag
`
`the icon with movement of the pen, but only that Hirayama-307 includes at least
`
`one embodiment in which the icon is not dragged. As explained above in section
`
`17
`
`
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`I.A.2.a, a POSA would have understood Hirayama-307’s “Detailed Description” to
`
`disclose icon 41 is not dragged during the gliding of the pen along the arrow’s path
`
`in FIG. 3A. A POSA would not view the brief disclosure in the summary as in
`
`conflict with or a teaching away from this more specific disclosure. EX1051, ¶80.
`
`As another example, claim 1 of Hirayama-307 does not instruct that the icon
`
`be visually dragged with the movement of the pen—there is no mention of “icon
`
`display coordinate[s]” or any other reason to incorporate movement of the “icon
`
`display coordinate position,” as allegedly described in the summary. EX1006,
`
`7:49-56. EX1051, ¶81.
`
`Moreover, it would have been at least obvious to a POSA to implement
`
`Hirayama-307’s user interface in both (1) a way that does not drag icon 41, and
`
`(2) a way in which icon 41 is dragged during gliding of the pen. A POSA would
`
`have recognized that both implementations would have had benefits and
`
`drawbacks, making both implementations reasonable choices. See §I.A.3.
`
`EX1051, ¶82.
`
`d) Hirayama-307’s Operation is Not “Drag-and-Drop,”
`and Is Indistinguishable From the ’879 Specification,
`Neonode N1/N2.
`A POSA would have also recognized that Hirayama-307’s FIG. 4A and its
`
`corresponding description do not specify a target for the end of the pen’s gliding
`
`movement as a POSA would expect for “drag-and-drop.” Notably, a drop target is
`
`18
`
`
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`an object, not merely an area of the screen. However, Hirayama-307’s flowchart
`
`(FIG. 4A) does not determine whether a target object is contacted. Instead, at the
`
`end of the gliding and pen lift off, the same event occurs—the window 43 is
`
`opened and activated. EX1053, 99:13-100:9. Thus, even if the Board determines
`
`“drag-and-drop” operations are excluded from the claim (they are not), Hirayama-
`
`307’s operation is not a “drag-and-drop.” EX1059, 74-75; §I.A.1.b. EX1051,
`
`¶¶83-84, 90.
`
`Importantly, Hirayama-307’s operation is nearly identical to that disclosed
`
`in the ’879 patent, where the user touches down on an icon 21-23 in menu area 2,
`
`and moves their finger from the menu area 2 to the display area 3 to activate a
`
`function on the display area 3. Hirayama-307 similarly describes: the user
`
`touches the pen down on an icon in the hatched menu area, moves the pen to the
`
`display area (outside the hatched area), in response to which a processing window
`
`corresponding to the icon is displayed in the display area. EX1051, ¶85.
`
`19
`
`
`
`IPR2021-00144 (8,095,879)
`Petitioners’ Reply
`
`
`
`EX1001, FIGs. 1-2; EX1006, FIG. 3A (annotated).
`If the user touches keyboard function 22, for example, and moves their
`
`finger to the display area, a keyboard is activated on the display. EX1001, 4:7-11,
`
`4:36-38, FIG. 5; EX1053, 49:13-25. It could be said the user “perceives some
`
`form of” the keyboard icon 22 “being logically dragged” by the movement of the
`
`finger and dropped on the display area 3. EX2007, ¶¶61, 67. Thus, the only
`
`embodiment in the ’879 specification describes the very scenario Neonode alleges
`
`is the “drag-and-drop” operation excluded from the claim. EX1051, ¶
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
