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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
`
`____________
`
`Case IPR2021-00144
`Patent 8,095,879
`
`____________
`
`
`
`PATENT OWNER’S DEMONSTRATIVE EXHIBITS
`(EXHIBIT 2046)
`
`
`
`
`
`
`
`
`
`
`Samsung, Apple v. Neonode
`
`IPR2021-00144
`U.S. Patent No. 8,095,879
`
`Neonode Smartphone LLC
`September 6, 2022
`
`Nathan Lowenstein
`Kenneth Weatherwax
`Parham Hendifar
`Lowenstein & Weatherwax LLP
`
`Demonstrative Exhibit – Not Evidence
`
`
`
`The Petition Is Limited To Grounds 2A-2D
`
`Demonstrative Exhibit – Not Evidence
`
`Paper 50 [Stipulation to Limit Petition]
`
`2
`
`
`
`Table Of Contents
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Secondary Indicia
`
`“gliding … away” (All Claims)
`
`“the representation of the function is not relocated or duplicated
`during the gliding” (All Claims)
`
`“applications and files” (Claim 6)
`
`“a shell upon an operating system” (Claim 15)
`
`Demonstrative Exhibit – Not Evidence
`
`3
`
`
`
`Neonode Phone Introduced In 2002, Years Before Apple’s
`iPhone (2007) And Samsung’s Galaxy (2009)
`
`Ex. 2008 [N2-Advertisement-Video] (00:26-00:27)
`
`Core Feature Was Swipe-Based User Interface
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 5
`
`4
`
`
`
`Applicant: “Swipes” Correspond To The Claimed “Gliding …
`Away” As Shown In N2 Video
`
`Ex. 1003 [Prosecution History] 357
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 24; Sur-Reply, 14-15
`
`5
`
`Ex. 2035 [2008-03-14 Office-Action-Response] 15-16
`
`
`
`Neonode’s N1 Phone (2002) Was The First Swipe-Based Smartphone—
`Years Before iPhone (2007) And Galaxy (2009)
`
`Ex. 2020 [Hollatz-Dissertation ] 8,
`
`Ex. 2018 [PhD-Dissertation ] 9
`
`Ex. 2013 [Pen-Computing-Magazine-N2-Review] 1
`
`“And if the iPhone’s swipes and taps seem futuristic,
`they are not. Neonode has been using them since the
`first N1 came out. In fact, the company’s Neno user
`interface is based entirely on swipes and taps. [I]t must
`be vexing to see Apple essentially claim ownership of
`concepts the Neonode phone has been using for at
`least five years”
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 14-15
`
`6
`
`
`
`Users Compared Neonode’s “Original” “Sweeping Touch
`Screen” With iPhone “Copycat”
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 2036 [User-Video ] (at 0:04, 0:06, 0:12, and 0:17);POR, 13
`
`7
`
`
`
`Neonode Phones’ Swiping Interface Received Effusive Praise
`
`Ex. 2012 [Pen-Computing-Magazine-N1-Review] 2-3
`
`Ex. 2014 [Trend-Hunter-Article] 1
`
`Ex. 2021 [iPhone-Killer ] 2
`
`Ex. 2012 [Pen-Computing-Magazine-N1-Review] 5
`
`“swipe, swipe, swipe … If this sounds like the dreaded
`“gestures” that never really caught on in pen computing, it’s
`not. The swipes are much simpler. … Neonode’s swiping
`interface is [] simple and brilliant”
`
`“designed for advanced simplicity. You do everything on
`screen, simply and conveniently, with just one finger.”
`
`“the strongest contender for the title of ‘iPhone killer,’ … the
`screen reacts to the intuitive passage of a finger over the
`screen to initiate basic phone …”
`
`“The Neonode phone is quite obviously unique, ... The user
`interface is compelling …. The speed is simply amazing.
`That’s the way a phone should operate.”
`
`Exs. 2016 [tnkgrl-Media-post] 1
`
`“definitely a best kept secret device–Neonode’s touch-
`based user interface with gesture recognition ... is extremely
`intuitive ...”
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 9-10, 12-13
`
`8
`
`
`
`Neonode Phones’ Swiping Interface Received Effusive Praise
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 14-17; Exs. 2030-2031
`
`9
`
`
`
`Petitioner Samsung Itself Praised And Licensed The Application
`From Which ’879 Patent Issued
`
`“the future of
`mobile phones.
`We need this.”
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 11-12, 18
`
`10
`
`
`
`’879 Application Was One Of Only Two Licensed Applications,
`And Specifically Called Out In The Agreement
`
`The [Neonode] mobile handsets are based on the light beam controlled
`touch-screen, “zForce”, and software for interaction with the operating
`system of the device, “Neno”. Neonode is in possession of technology, -
`including zForce and Neno – intellectual property rights and know-how for
`development of mobile handsets (the ‘”Neonode IPR”)
`
`Ex. 2028 [Samsung-Agreement] 2
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 5-6
`
`11
`
`
`
`Neonode Phones Practiced The Claimed Inventions
`
`Ex. 2023 [Shain-Decl.] ¶¶4-6
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 1-2; see also Ex. 2007 [Rosenberg-2nd-Decl.] ¶40
`
`12
`
`
`
`Dr. Rosenberg: Neonode Phones Practice The Claimed
`Invention
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2007 [Rosenberg Decl.] ¶ 40; Sur-Reply, 1-2
`
`13
`
`
`
`Petitioner: Arrows Are “Relocated Or Duplicated” During
`Gliding
`
`Demonstrative Exhibit – Not Evidence
`
`Reply, 30-31
`
`14
`
`
`
`Neonode Phones’ “Representation Of Function” Were Printed
`Icons That Were Not “Relocated Or Duplicated” During Gliding
`
`“the Neonode N1 and N2 presented three icons in a strip
`along the lower edge … None of the icons were
`relocated or duplicated during the swiping gesture.”
`
`Ex. 2023 [Shain-Decl.] ¶6
`
`Ex. 1057 [Goertz] 151:20-152:7
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 2
`
`15
`
`
`
`Petitioner Does Not Show Why Printed Icons Cannot Meet The
`Claims’ “A Representation Of A Function Is Provided”
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 2-3
`
`16
`
`
`
`Arrows Were Not “Relocated Or Duplicated” During Gliding, But
`Upon Touch And Before Glide To Show Possible Pathways
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 3-4
`
`17
`
`
`
`Additional Arrows Can Be Perpendicular To The Direction Of The
`Subsequent Glide
`
`Direction Of Subsequent Glide
`
`Direction Of Additional Arrows
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 3-4
`
`18
`
`
`
`Table Of Contents
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Secondary Indicia
`
`“gliding … away” (All Claims)
`
`“the representation of the function is not relocated or duplicated
`during the gliding” (All Claims)
`
`“applications and files” (Claim 6)
`
`“a shell upon an operating system” (Claim 15)
`
`Demonstrative Exhibit – Not Evidence
`
`19
`
`
`
`Petitioner Fails Prove “Gliding ... Away”
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 19-60
`
`20
`
`
`
`Petitioner Relies On Hirayama-307’s “Mov[ing] (i.e. drag[ging])”
`The Pen For “Gliding … Away”
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 20; Sur-Reply, 7
`
`21
`
`Pet., 58
`
`
`
`Hirayama-307 Confirms 14 Times That Its Movement/Operation
`Is A “Drag,” Not A “Glide”
`
`Abstract
`
`1:52-59
`
`6:10-13
`
`7:8-10
`
`7:22-24
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 7-8; POR, 38
`
`22
`
`
`
`Hirayama-307’s Conventional Drag-And-Drop Drags An Icon
`And Drops The Enlarged Icon At The Desired Location
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2007 [Rosenberg Decl.] ¶¶ 59, 61; POR, 26-27
`
`23
`
`
`
`Dragging And Gliding Are Distinct
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 8
`
`24
`
`
`
`Petitioner: No Construction Of “Gliding ... Away”
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 2044 [Bederson-2nd-Depo.] 25:10-17; Sur-Reply, 8
`
`25
`
`
`
`Petitioner’s Expert: No “Analysis” Of “Possible Difference” In
`Meaning Between “Gliding” And “Dragging”
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 2044 [Bederson-2nd-Depo.] 25:10-17; Sur-Reply, 8
`
`26
`
`
`
`Reply: Dragging Discloses Gliding Because They Are Both
`Movements
`
`Reply, 3
`
`Reply, 19
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 12
`
`27
`
`
`
`Prosecution History: Claims Were Changed From “moving ...
`from ... to” To “gliding ... away”
`
`Original Pending Claim 1:
`“… each of said first, second, and third functions simultaneously
`represented in said menu area being activated by the single step
`of a blunt object moving in a direction from a starting point that is
`the representation of the corresponding one of said first, second,
`and third functions in said menu area to said display area …”
`
`Ex. 1003 [Prosecution History] 326
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 12
`
`28
`
`
`
`Applicant “Encouraged” Examiner To Watch N2 Video
`Demonstration Prior To Reviewing Applicant’s Arguments
`
`Ex. 2035 [2008-03-14 Office-Action-Response] 15-16
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 12-13
`
`29
`
`Ex. 2008 [N2-Advertisement-Video] (00:26-00:27)
`
`
`
`Examiner “can now see the difference between prior art of record
`and present invention” “in light of the video demonstration”
`
`Ex. 2045 [Final-Office-Action] 16
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 13
`
`30
`
`
`
`After Examiner Interview, Applicant Changed “moving ... from
`... to” To “gliding ... away” To “properly claim the … invention”
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 14
`
`31
`
`Ex. 1003 [Prosecution History] 326, 343
`
`
`
`CAFC: Amendments To Change A Word “suggest[s] ... the new
`word differs in meaning in some way from the original word.”
`
`“when a word is changed during prosecution, the
`change tends to suggest that the new word differs in
`meaning in some way from the original word. ”
`
`Ajinomoto Co. v. ITC
`932 F.3d 1342, 1351 (Fed. Cir. 2019)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 23-24
`
`32
`
`
`
`Applicant Clarified That “Gliding” Is A Swipe, Not Just Any
`Movement
`
`Ex. 1003 [Prosecution History] 357
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 24; Sur-Reply, 14
`
`33
`
`Ex. 1003 [Prosecution History] 269
`
`
`
`The Specification Is Consistent
`
`Ex. 2008 [N2-Advertisement-Video] (00:26-00:27)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 25
`
`34
`
`
`
`Petitioner’s Abject Failure Of Proof As To Why “Dragging”
`Discloses “Gliding”
`
`Dragging
`≠
`Gliding
`
`• No claim construction
`
`• No plain meaning analysis
`
`• No expert support or analysis
`
`Prosecution History Conclusively Eliminates Any Remaining Doubt
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 7-8
`
`35
`
`
`
`Prosecution History: Drag-And-Drop Is A “conventional
`operation[]” “distinct[]” From “novel touch-and-glide”
`
`Ex. 1003 [Prosecution History] 170
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 20-21; Sur-Reply, 9
`
`36
`
`
`
`The Applicant Disclaimed Drag-and-Drop
`
`Ex. 1003 [Prosecution History] 171
`
`“Critically, the very next sentence begins with the word
`instead, and states, ‘[i]nstead, the Candelore patent
`discloses pointers that point to the location of encrypted
`portions of the video data relative to the file. … [W]e find no
`other way to interpret the applicants’ arguments. ….”
`
`Hulu LLC v. DivX LLC
`IPR2021-01418, Paper 15, 23-24 (Mar. 15, 2022)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 21-22
`
`37
`
`
`
`Hoshino’s And Hirayama-307’s Drag-And-Drop Are Functionally
`Identical
`
`In both, the icon is activated by dragging and dropping it at A desired area
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2007 [Rosenberg Decl.] ¶¶ 62-64; POR, 28-29
`
`38
`
`
`
`Reply Argues That Applicant Overcame Hoshino On A Different Basis Than
`The Distinction Between “Gliding” And “Drag-And-Drop”
`
`Reply, 7-8
`
`Demonstrative Exhibit – Not Evidence
`
`39
`
`
`
`Federal Circuit: Disclaimer Can Be Based On Any Statement By Applicant
`
`“We find no support for Uship's proposition that
`prosecution disclaimer applies only when applicants
`attempt to overcome a claim rejection. Our cases
`broadly state that an applicant's statements to the PTO
`characterizing its invention may give rise to a
`prosecution disclaimer. …. For example, an
`applicant's remarks submitted with an Information
`Disclosure Statement can be the basis for limiting
`claim scope.”
`
`Demonstrative Exhibit – Not Evidence
`
`Uship Intellectual Props., LLC v. United States
`714 F.3d 1311, 1315 (Fed. Cir. 2013)
`
`Sur-Reply, 10
`
`40
`
`
`
`Reply: Hirayama-307’s Is Not A Drag-And-Drop
`
`Reply, 9
`
`Demonstrative Exhibit – Not Evidence
`
`41
`
`
`
`Hirayama-307 Confirms 14x That It Utilizes A Dragging
`Operation
`
`Abstract
`
`1:52-59
`
`6:10-13
`
`7:8-10
`
`7:22-24
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 16
`
`42
`
`
`
`Hirayama-307 Is A Drag-And-Drop Even If It Did Not Have Visual
`Feedback During Dragging
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2007 [Rosenberg Decl.] ¶61; POR, 26-27; Sur-Reply, 16
`
`43
`
`
`
`Petitioner’s Assertion That A Drag-And-Drop May Not Drop On
`An Area Of Screen Is Refuted By Its Own Expert
`
`Petitioner’s Reply
`“Notably, a drop target is an object,
`not merely an area of the screen.”
`
`Petitioner’s Expert
`“for example, you drop an icon onto
`the screen.”
`
`Reply, 18-19
`
`Ex. 2005 [Bederson-Depo.] 141:10-12
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 17-18; see also Ex 2007 [Rosenberg Decl.] ¶60
`
`44
`
`
`
`Fig. 4A Does Not Change The Nature Of Hirayama’s “Dragging”
`Movement
`
`Pen Shifted Through Dragging Motion
`
`Ex. 1006 [Hirayama-307] 7:8-10
`
`Ex. 1006 [Hirayama-307] 7:22-24
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 18
`
`45
`
`
`
`“Shifted By A Large Amount” Is Not To Determine A “Glide,” But To
`Determine If Pen Is Dragged Outside Of Hatched Area
`
`Hirayama-307
`
`Petitioner’s Expert
`“A POSA would most likely program the
`minimum y shift amount to be
`calculated at the time the pen
`touches the icon as the distance
`between the point touched within the
`icon and the bottom of the hatched
`area.”
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 19
`
`46
`
`Ex. 1051 [Bederson-Reply-Decl.] 44-45 n. 2
`
`
`
`Petitioner’s Attempt To Analogize Hirayama-307’s Drag-And-
`Drop To Glide Activation Is Misplaced
`
`Reply:
`
`Hirayama-307:
`
`At the end of gliding, “the same
`event” does not occur. The
`enlarged window is placed at
`the precise location the
`dragged icon is dropped
`
`Reply, 19
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 22
`
`47
`
`
`
`Petitioner’s Shallow Comparison Of Made-up Hirayama-307
`Figure With ’879 Figs. 1-2 Ignores The Distinct Movements
`
`Activates icon
`through glide/
`swipe motion
`
`Activates by
`dragging icon
`outside hatched
`area and dropping
`at desired location
`
`Reply, 20
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 18-20
`
`48
`
`
`
`Petitioner Wrongly Claims The N2’s Glide/Swipe Is
`“Indistinguishable” From Hirayama-307’s Drag-And-Drop
`
`Neonode Phones Implementing “Gliding”:
`
`Hirayama-307’s Dragging Icon And Dropping It At Desired Location:
`
`Ex. 2008 [N2-Advertisement-Video] (00:26-00:27)
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 22-23
`
`49
`
`
`
`Examiner Considered Hirayama-307 “Pertinent,” But Correctly
`Did Not Rely On It To Disclose “Gliding … Away”
`
`Ex. 2009 [2006-03-23 Non-Final Rejection] 15
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 26
`
`50
`
`
`
`The Distinction Between Hirayama-307’s Drag-And-Drop And
`Patent’s “Gliding” Matters
`
`Ex. 2007 [Rosenberg-2nd-Decl.] ¶ 65
`
`If this sounds like the dreaded "gestures" that
`never really caught on in pen computing, it's not.
`The swipes are much simpler ….
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 2012 [Pen-Computing-Magazine-N1-Phone-Review] 2-3
`
`POR, 9; 29-30
`
`51
`
`
`
`Petitioner’s Ren Reference Confirms: Even Though Slide-Off And Slide-
`Touch Can Have Identical Stylus Movement, Slide-Touch Was
`Objectively And Subjectively Superior
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 29-30
`
`52
`
`Ex. 2007 [Rosenberg-2nd-Decl.] ¶ 66
`
`
`
`Table Of Contents
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Secondary Indicia
`
`“gliding … away” (All Claims)
`
`“the representation of the function is not relocated or duplicated
`during the gliding” (All Claims)
`A. Hirayama-307 alone
`B. Hirayama-307 And Ren
`
`“applications and files” (Claim 6)
`
`“a shell upon an operating system” (Claim 15)
`
`Demonstrative Exhibit – Not Evidence
`
`53
`
`
`
`Grounds Do Not Render Obvious “the representation of the
`function is not relocated or duplicated during the gliding”
`
`Petition Relies On
`Hirayama-307 Alone
`Or In Combination
`With Ren
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 19-60
`
`54
`
`
`
`Petitioner’s Obviousness Is Premised On Claim That Hirayama’s
`Icon 41 Is Not Described To Be “relocated or duplicated”
`
`Pet., 60
`
`Icon-41: ”Representation
`Of A Function”
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 36-37
`
`55
`
`
`
`Summary Of Hirayama-307’s Operation
`
`2
`
`The stylus touches the icon the user wishes to “enlarge.”
`Hirayama-307, 2:1-4; 5:30-32.
`
`While the stylus moves within hatched area 45,
`icon 41 moves with it. Hirayama-307, 2:5-8; 5:39-53.
`
`When the stylus moves outside of hatched area 45, icon 41
`is “enlarged as a window 43.” Hirayama-307, 2:8-13; 5:59-66.
`
`Enlarged window 43 is placed at the position where the
`stylus is lifted from the screen. Hirayama-307, 2:8-13; 5:59-66.
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2007 [Rosenberg Decl.] ¶¶ 71-72; POR, 36-39
`
`56
`
`
`
`Summary Of The Invention: Hirayama-307 Expressly States That
`Icon 41 Is “Relocated Or Duplicated” During Dragging
`
`The pen touches the “desired icon”
`(e.g., icon 41)
`
`“The icon display
`coordinate position”
`moves with the pen
`
`“The icon” is “converted” into window (e.g.,
`window 43) in the non-hatched display area
`
`Ex. 1006 [Hirayama-307] 2:1-13
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2007 [Rosenberg Decl.] ¶¶ 73-74; POR, 39-40
`
`57
`
`
`
`Confirming Icon-41 Moves With The Pen, Icon-41 Is “Enlarged”
`During Dragging
`
`Hirayama-307, 5:38-40
`
`Hirayama-307, 5:64-66
`
`Hirayama-307, 7:13-15
`
`Hirayama-307, 2:10-11
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2007 [Rosenberg Decl.] ¶¶ 78-79; POR, 42
`
`58
`
`
`
`Confirming That Icon-41 Was “Relocated,” The Open Window Is
`Dragged To “Vacant” Position To Close
`
`If Icon-41 Didn’t Move, Why Would
`The Position Be “Vacant”?
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2007 [Rosenberg Decl.] ¶¶ 75-76; POR, 41
`
`59
`
`
`
`No Disclosure In Hirayama-307’s Text Contradicts Its Teaching That
`Icon-41 Is Relocated/Duplicated During Dragging
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2007 [Rosenberg Decl.] ¶¶ 78-79; POR, 42
`
`60
`
`
`
`Petitioner’s Reliance On Fig. 3A To Argue Icon-41 Is Not
`Relocated Or Duplicated During Dragging Is Misplaced
`
`W r o n g
`
`Demonstrative Exhibit – Not Evidence
`
`Reply, 14
`
`61
`
`
`
`Fig. 3A’s Description Is Clear That It Denotes The State Of Device
`At Startup Before Any Dragging Operation Is Initiated
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2007 [Rosenberg Decl.] ¶¶ 80-81; POR, 43-45
`
`62
`
`
`
`If Fig. 3A Showed A Dragging Operation, Icon-41 Would Be
`Enlarged, As In Fig. 3B
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2007 [Rosenberg Decl.] ¶ 80; POR, 43-45
`
`63
`
`
`
`Hirayama-878 Confirms Icons Are “Relocated” During The
`Dragging Operation And Their Location Is Vacant
`
`Petition:
`
`Hirayama-878
`
`Pet., 70-71
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 45-46
`
`64
`
`
`
`Reply Argues: Hirayama-307 Description Discloses A Different
`Embodiment Than The Summary Of The Invention
`
`Why would detailed embodiment be contrary to the
`summary of invention?
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 24
`
`65
`
`Reply, 10
`
`
`
`“Second Aspect” Of Hirayama-307’s Invention Is Merely To Close A
`Window, Where The Representation Is Also Duplicated/Relocated
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 24
`
`66
`
`Ex. 1006 [Hirayama-307] 2:14-27
`
`
`
`Like Its Summary, Hirayama-307’s Detailed Description Teaches
`Icon-41 Is Relocated/Duplicated During Dragging
`
`ü Hirayama-307 repeatedly states
`that its icon is “enlarged” during
`the dragging operation (Hirayama-
`307 at, e.g., 5:39-40, 5:64-66, 7:14-15, 2:10-11)
`
`ü Hirayama- 307 provides that an
`open window is dragged back
`“to the predetermined vacant
`position” (Hirayama-307 at, e.g., 7:3-6; Fig. 4B.)
`
`ü Hirayama-878 also shows a
`vacant position for the
`relocated icon (POR, 45-46)
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 23-24
`
`67
`
`
`
`Even If The Position Of Enlarged Icon-41 Were Not “Vacant,” It
`Only Means That Icon-41 Was “Duplicated” During Gliding
`Hirayama-307 Does Not Disclose The Claim Whether Or Not Location Of
`Icon-41 Is Vacant During Dragging
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 25
`
`68
`
`
`
`The Petition Presented No Motivation Why A POSITA Would Modify
`Hirayama-307 To Remove Visual Feedback During Dragging
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 25
`
`69
`
`
`
`Providing Feedback During Dragging Was And Is Important And A
`Fundamental Aspect Of User Interface Design
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 2007 [Rosenberg-2nd-Decl.] ¶ 83
`
`POR, 47
`
`70
`
`
`
`Relocation/Duplication Has Been The Industry Standard
`Feedback Mechanism For Drag-And-Drop
`
`Ex. 2007 [Rosenberg-2nd-Decl.] ¶ 85
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 48; Sur-Reply, 27-28
`
`71
`
`Ex. 2044 [Bederson-2nd-Depo.] 8:9-24; 9:8-25;
`10:2-19; 10:25-11:3; 11:12-22; 15:5-15; 16:22-17:23
`
`
`
`Petitioner Relies On A Cursor To Suggest Hirayama-307’s Visual
`Feedback Of Dragging Is Unnecessary
`
`Reply, 16
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 48-50; Sur-Reply, 26
`
`72
`
`
`
`A Cursor Does Not Inform The User Whether The Drag Operation
`Is Being Successfully Performed
`
`With only the cursor as feedback, the user in the right photo would not
`know if the dragging of the pen is also successfully dragging icon-41
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2007 [Rosenberg Decl.] ¶¶ 86-88; POR, 48-50; Sur-Reply, 26
`
`73
`
`
`
`Reply’s New Motivation Is Untimely And Unsupported
`
`Reply, 25
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 27
`
`74
`
`
`
`A New Motivation To Modify References Presented For The First
`Time In A Reply Is Untimely
`
`Demonstrative Exhibit – Not Evidence
`
`Dish Network L.L.C. v. Sound View Innovations LLC,
`IPR2020-01276, Paper 40, 33 (PTAB Feb. 8, 2022)
`Sur-Reply, 27
`
`75
`
`
`
`Petitioner’s Expert Admitted: 2002 Systems Visually Showed
`Dragging With No “Computational” Challenges
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 27-28
`
`76
`
`Ex. 2044 [Bederson-2nd-Depo.] 8:9-24; 9:8-25;
`10:2-19; 10:25-11:3; 11:12-22; 15:5-15; 16:22-17:23
`
`
`
`Table Of Contents
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Secondary Indicia
`
`“gliding … away” (All Claims)
`
`“the representation of the function is not relocated or duplicated
`during the gliding” (All Claims)
`A. Hirayama-307 alone
`B. Hirayama-307 And Ren
`
`“applications and files” (Claim 6)
`
`“a shell upon an operating system” (Claim 15)
`
`Demonstrative Exhibit – Not Evidence
`
`77
`
`
`
`The Board Already Rejected Petitioner’s Combination Of
`Hirayama-307 With Ren
`
`Demonstrative Exhibit – Not Evidence
`
`Paper 24, 20
`
`POR, 51-52
`
`78
`
`
`
`Petition’s Failure To Present A Prima Facie Case Mandates
`Rejection Of This Ground Without Any Additional Argument
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 51-52
`
`79
`
`
`
`Petitioner Seeks To Combine Hirayama-307 With A Specific
`Variant Of One Of Ren’s Six Categories Of Gestures
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 2007 [Rosenberg-2nd-Decl.] ¶ 90; POR, 52-53
`
`80
`
`
`
`The Petition Proposed Two Motivations To Combine Hirayama-
`307 With Ren
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 53
`
`81
`
`Pet., 62
`
`
`
`As The Board Already Found, Being Directed To Solutions To
`Similar Problems Does Not Provide A Motivation To Combine
`
`Board: That “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.”
`Paper 24, 20
`
`Petitioner “had not proven a motivation to combine
`because it merely (1) alleged the references came
`from the same field of study and address the same
`problem; and (2) recited boilerplate legal conclusions
`untethered to any claim language.”
`
`Comcast Cable Communs., LLC v. Promptu Sys. Corp.,
`838 F. App’x 551, 557 (Fed. Cir. 2021)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 53-54
`
`82
`
`
`
`Petition’s “Obvious To Try” Rationale Fails To Show Either A Finite
`Number Of Possibilities, Or A Reason To Chose The Path Of Invention
`
`“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,’ ‘small,’ or ‘easily traversed,’
`and that skilled artisans would have had a reason to
`select the route that produced the claimed invention.”
`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.,
`676 F.3d 1063, 1072 (Fed. Cir. 2012)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 55-56
`
`83
`
`
`
`Universe Of Selection Gestures Is Not Finite
`
`Ex. 1004 [Ren] 389
`
`“... there may be others. ... in the last couple of hours,
`we’ve identified two others .... ”
`
`Ex. 2005 [Bederson-Depo.] 50:19-51:8
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 56
`
`84
`
`
`
`Petition Points To No Deficiency In Hirayama-307 Or Other Reason
`Why POSITA Would Select The Route That Produced Invention
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 54-55
`
`85
`
`Ex. 2007 [Rosenberg-2nd-Decl.] ¶ 93
`
`
`
`No Motivation To Combine Systems That Independently Operate
`Efficiently To Accomplish Similar Tasks
`
`“[B]oth of these references independently accomplish
`similar functions, namely, draining fluids. Because each
`device independently operates effectively, a person
`having ordinary skill in the art, who was merely seeking
`to create a better device to drain fluids from a
`wound, would have no reason to combine the
`features of both devices into a single device.”
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342, 1369 (Fed. Cir. 2012)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 55
`
`86
`
`
`
`Ren Itself Points POSITA To Use “Slide Touch,” Not The “Slide Off”
`That The Petition Seeks To Combine With Hirayama-307
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 57; Ex. 1004 [Ren] 412
`
`87
`
`
`
`Ren’s Two Experiments: Petition’s Relied Upon “Slide Off” Was
`Third And Fifth Of Six Strategies In Mean Selection Time
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 58
`
`88
`
`
`
`Ren’s Two Experiments: Petition’s Relied Upon Slide Off Was
`Third Of Six Strategies In Mean Error Rate
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 58
`
`89
`
`
`
`Petitioner’s Allard Reference Also Directs A POSITA To “Slide
`Touch,” Not Petition’s Relied Upon “Slide Off”
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 59
`
`90
`
`Ex. 2007 [Rosenberg-2nd-Decl.] ¶ 100
`
`
`
`Petitioner’s Expert At Deposition And In His Publications Has
`Opined That A POSITA Would Generally Prefer A Tap Gesture
`
`Ex. 2005 [Bederson-1st-Depo] 56:2-10
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 2006 [Bederson-Paper] 203
`POR, 60
`
`91
`
`
`
`Reply’s New Motivation To Select Ren’s “Slide Off” Strategy Is
`Untimely And Incorrect
`
`Does Not Explain Why A POSITA Would Abandon
`Hirayama-307’s Fully Functioning System In Favor Of Ren
`
`Does Not Explain Why A POSITA Would Look To Selection
`Techniques (Ren) To Implement A Drag-And-Drop
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 28-29
`
`92
`
`
`
`Table Of Contents
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Secondary Indicia
`
`“gliding … away” (All Claims)
`
`“the representation of the function is not relocated or duplicated
`during the gliding” (All Claims)
`
`“applications and files” (Claim 6)
`
`“a shell upon an operating system” (Claim 15)
`
`Demonstrative Exhibit – Not Evidence
`
`93
`
`
`
`Claim 6 Requires Activation Displays “A List” Of “Available
`Applications And Files”
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 61-62
`
`94
`
`
`
`The Petition Relies On Allard’s Tool Icon For The Disclosure Of “A
`List” With “Available Applications And Files”
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 62
`
`95
`
`Pet., 73
`
`
`
`Even If Combined, Allard Does Not Disclose Claim 6 Because Its Tool
`Icon Presents A List Of Applications, Not “Applications And Files”
`
`Ex. 1010 [Allard] 6:8-17
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 62
`
`96
`
`
`
`Untimely Reply Argument Relies On Allard’s Fax Files Under Its
`Fax Screen
`
`Ex. 1010 [Allard] 6:8-18
`
`A “fax screen” with a file list, and a “tools screen” with A list
`of applications, are not “a list” with “available applications
`and files”
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 29
`
`97
`
`
`
`The Petition Fails To Provide Any Reason To Modify Hirayama-
`307 In View Of Allard To Disclose A List Of Applications
`
`Hirayama-307 (left) is much larger than Allard’s small mobile
`device (right) that requires a list
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 63
`
`98
`
`
`
`How Would A User Open And Close Hirayama-307’s Applications
`If Icons Are In A List Instead Of In The Hatched Area?
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 63-64
`
`99
`
`
`
`Table Of Contents
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Secondary Indicia
`
`“gliding … away” (All Claims)
`
`“the representation of the function is not relocated or duplicated
`during the gliding” (All Claims)
`
`“applications and files” (Claim 6)
`
`“a shell upon an operating system” (Claim 15)
`
`Demonstrative Exhibit – Not Evidence
`
`100
`
`
`
`Claim 15 Requires That Claim 1’s Computer Program Code
`Function “As A Shell Upon An Operating System”
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 64
`
`101
`
`
`
`User Interface For Gliding Activation Must Be An Interface Between
`User And OS (i.e., An Add-on To The OS), Instead Of A Part Of The OS
`
`D
`
`E
`
`T
`
`U
`
`D I S P
`
`N
`
`U
`
`Ex. 2038 [IEEE Dictionary] 1039
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 64-65
`
`102
`
`
`
`Petition First Asserts That Hirayama-307 Inherently Discloses “Shell”
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 65-66
`
`103
`
`Pet., 67
`
`
`
`Petitioner Provides No Analysis Why Hirayama-307’s Custom
`Device Would “Necessarily” Be Implemented As A Shell
`
`“A party must [] meet a high standard in order to rely
`on inherency ... the limitation at issue necessarily must
`be present, or the natural result of the combination ...
`Inherency, however, may not be established by
`probabilities or possibilities. The mere fact that a
`certain thing may result from a given set of
`circumstances is not sufficient.”
`
`PAR Pharm. v. TWi Pharms., Inc.,
`773 F.3d 1186, 1195-96 (Fed. Cir. 2014)
`(internal citations, quotations omitted)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 65-66
`
`104
`
`
`
`Petition Presents No Reason Why A POSITA Would Implement Hirayama-307’s
`Custom System As A “Shell,” Requiring More CPU, Memory, Programming Code
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 66
`
`105
`
`Pet., 67
`
`
`
`Portions Of Petitioner’s Second Expert Declaration Not
`Discussed In The Reply Should Be Disregarded
`
`~18,700-word Declaration Is 3.3x Reply Word Limit
`
`Ex. 1051 [Bederson-2nd-Decl.] ¶¶ Not Discussed
`In Reply:
`¶¶38-42, 47 55-56, 58-59, 69, 71-74, 90-94, 100,
`103, 108-110, 120, 130, 132-133
`
`Ex 1051 [Bederson-2nd-Decl.] ¶¶ Only Partially
`Discussed In Reply:
`¶¶112, 119, 122
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 31
`
`106
`
`
`
`Reserve
`
`Demonstrative Exhibit – Not Evidence
`
`107
`
`
`
`Cases Routinely Finds Similar Language To Establish Prosecution
`Disclaimer
`
`• “applicants rarely submit affirmative disclaimers
`along the lines of ‘I hereby disclaim the following ...’
`during prosecution and need not do so to meet the
`applicable standard.”
`Saffran v. Johnson & Johnson, 712 F.3d 549, 559 (Fed. Cir. 2013)
`
`• “In light of Applicant’s unequivocal statements
`during prosecution, we determine that there is an
`express disclaimer . . . for issued claims 38 and 40.”
`Ford Motor Co. v. TMC Fuel Injection Sys., LLC, IPR2014-00272, Paper 36, 19
`(June 22, 2015)
`
`Ford Motor Co. v. Vehicle Operation Techs., LLC, IPR2014-00594, Paper 26,
`15-17 (Oct. 15, 2014) (similar)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 22
`
`108
`
`
`
`Ex. 2010 [Hoshino] Fig. 19
`
`Ex. 2010 [Hoshino] Fig. 19 ® neonode’
`
`Demonstrative Exhibit – Not Evidence
`Demonstrative Exhibit — Not Evidence
`
`109
`POR, 28-29
`POR, 28-29 (Gk
`
`
`
`Petitioner’s Expert Cannot Explain His Earlier Inconsistent
`Opinions
`
`Ex. 2006 [Bederson-Paper] 203
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 60-61
`
`110
`
`Ex. 2005 [Bederson-1st-Depo] 52:1-7
`
`
`
`Petitioner’s Expert Has No Opinion On What A Swipe Gesture
`Means
`
`Ex. 2044 [Bederson-2nd-Depo.] 33:3-13
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 8
`
`111
`
`
`
`Petitioner’s Expert Has No Opinion On Whether A Swipe Gesture
`Is A Constituent Part Of Drag-And-Drop
`
`Ex. 2044 [Bederson-2nd-Depo.] 34:2-9
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 8
`
`112
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the following documents were served
`
`by electronic service, by agreement between the parties, on the date below:
`
`PATENT OWNER’S DEMONSTRATIVE EXHIBITS
`(EXHIBIT 2046)
`
`The names and address of the parties being served are as follows:
`
`IPR50095-0015IP1@fr.com
`holt@fr.com
`tiffany.miller@dlapiper.com
`jim.heintz@dlapiper.com
`PTABInbound@fr.com
`axf-ptab@fr.com
`
`
`W. Karl Renner
`David Holt
`Tiffany C. Miller
`James M. Heintz
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Vinson Lin/
`
`
`
`Date: August 31, 2022
`
`
`
`
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