`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 55
`Entered: October 12, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______
`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC. & APPLE, INC.,
`Petitioner
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`__________
`
`IPR2021-00144
`Patent 8,095,879 B2
`__________
`
`Record of Oral Hearing
`Held: September 6, 2022
`__________
`
`Before KARA L. SZPONDOWSKI, CHRISTOPHER L. OGDEN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`KARL RENNER, ESQ.
`DAVID HOLT, ESQ.
`Fish & Richardson
`axf-ptab@fr.com
`holt2@fr.com
`
`
`
`TIFFANY MILLER, ESQ.
`DLA Piper
`tiffany.miller@dlapiper.com
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`NATHAN LOWENSTEIN, ESQ.
`KENNETH WEATHERWAX, ESQ.
`PARHAM HENDIFAR, ESQ.
`ROBERT PISTONE, ESQ.
`Lowenstein & Weatherwax, LLP
`lowenstein@lowensteinwatherwax.com
`weatherwax@lowensteinweatherwax.com
`hendifar@lowensteinweatherwax.com
`pistone@lowensteinweatherwax.com
`
`
`
` The above-entitled matter came on for hearing Tuesday, September 6,
`2022, commencing at 1:00 p.m. EDT, via Videoconference.
`
`
`
`2
`
`
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`
`P-R-O-C-E-E-D-I-N-G-S
`
`1:00 p.m.
`JUDGE OGDEN: Hello, everybody. Welcome to the Patent Trial and
`
`Appeal Board. This is the oral hearing in IPR2021-00144 between Petitioner
`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc. and
`Apple, Inc. and between Patent Owner Neonode Smartphone, LLC. The
`challenged patent is US patent number 8,095,879. I am Judge Ogden and
`with me today are Judges Szpondowski and Howard.
`
`So let's start with counsel introductions. Who is appearing today for
`Petitioner?
`
`MR. HOLT: Thank you, Your Honor. This is David Holt from Fish &
`Richardson. I'm joined by lead counsel Karl Renner and Ms. Tiffany Miller
`on behalf of Petitioner.
`
`JUDGE OGDEN: Okay, thank you.
`
`And who is appearing on behalf of Patent Owner? Do we have Patent
`Owner on the line?
`
`MR. LOWENSTEIN: Can you hear me?
`
`JUDGE OGDEN: Yes.
`
`MR. LOWENSTEIN: Okay, my apologies. Good morning, Your
`Honors, Nathan Lowenstein of Lowenstein & Weatherwax on behalf of
`Patent Owner. I'm joined by my colleagues, Parham Hendifar, I believe
`Kenneth Weatherwax is dialed in, and my new colleague as of one hour ago,
`Robert Pistone, is also in the room.
`
`JUDGE OGDEN: Okay, thank you, Mr. Lowenstein.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`3
`
`
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`This hearing, as usual, is open to the public but the parties have
`
`indicated that there might arise a need to discuss matters that are under seal
`yet under the protective order.
`
`So we've indicated to the parties by email that if the need arises for
`either party to discuss such information that's covered by the protective
`order then the party can raise the issue with the panel during the hearing and
`can reserve up to 10 minutes of the party's remaining time that would be
`used during a closed portion at the end of the hearing that will be open only
`to people who are authorized under the protective order.
`
`So do either party at this time have any questions or comments about
`that that they'd like to raise at this point? First, Petitioner?
`
`MR. HOLT: No, Your Honor.
`
`JUDGE OGDEN: For Patent Owner?
`
`MR. LOWENSTEIN: No, Your Honor.
`
`JUDGE OGDEN: Okay, thank you. Let me just go over a few
`preliminary matters. I'd like to thank the parties for adapting to our video
`procedures during the pandemic which, you know, I mean, there's some
`special things to think about. One is that we want to make sure that each of
`the parties is able to hear and observe what's happening during the hearing
`and also to have the opportunity to be heard.
`
`So if there are any technical problems please let us know as soon as
`possible, possibly by calling the PTAB staff so that we can fix the problem
`or if you're disconnected so that we can get you connected again. And if
`necessary we'll pause the hearing so that we can work out any technical
`problems.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`4
`
`
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`And also the panel and the parties should have copies of all of the
`
`record and of all the demonstrative exhibits but it would be helpful to us and
`to the court reporter to please identify the particular slide that you're on and
`the particular place in the record, including the paper or exhibit number and
`the page within the records so that we could, everyone can go along with
`you while you're discussing the demonstrative or the record.
`
`So according to the terms of the oral hearing order each side has a
`total of 60 minutes to present their arguments. And since Petitioner is the
`party with the burden of proof, Petitioner will proceed first followed by
`Patent Owner. And then if the party has reserved rebuttal time Petitioner can
`make rebuttal arguments and then Patent Owner can also make surrebuttal
`arguments.
`
`And I will be keeping track of the time on a stopwatch and I'll try to
`give you a warning as your allotted time draws to a close.
`
`So first we'll go to Petitioner. Petitioner, how much of your 60
`minutes would you like to reserve for rebuttal, if any?
`
`MR. HOLT: We would like to reserve 15 minutes, Your Honor,
`please.
`
`JUDGE OGDEN: Fifteen you said?
`
`MR. HOLT: Yes, Your Honor.
`
`JUDGE OGDEN: Okay. So 45 minutes in your initial time and then
`15?
`
`
`
`MR. HOLT: Yes, Your Honor.
`JUDGE OGDEN: Okay. You can begin when you're ready.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`5
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`MR. HOLT: May it please the Board, my name is David Holt. My
`
`colleague Ms. Tiffany Miller and I will be presenting on behalf of
`Petitioners this afternoon.
`
`As you see on Slide 3 of Petitioners' demonstratives, there is a single
`independent claim in the '879 patent and this is the claim on which we'll be
`focusing most this afternoon. I'll be digging into the details of Claim 1 in
`just a moment.
`
`Before I do though, I wanted to have you turn to Slide 6 and note
`briefly that the parties have agreed to focus the proceeding on grounds 2A
`through 2D, which are based on the Hirayama 307 reference.
`
`At times you may hear us refer to this reference more generally as
`simply Hirayama, though as you can see here, there is also a Hirayama 878
`that was used as part of ground 2B against Dependent Claim 3.
`
`Grounds 2A through 2D were the focus of Petitioners' rehearing
`request and were the focus of the subsequent institutional decision.
`
`Before diving into the grounds though, let's set the stage a bit. To
`start, I'd like to briefly talk about the '879 patent and what it describes
`starting with Claim 1 on Slide 8. Here we see that the '879 patent claims
`aspects of a user interface for a mobile handheld computer unit.
`
`Beyond the preamble, the claim has four relatively straightforward
`limitations as we see here. Limitation 1A is a touch sensitive area in which a
`representation of a function is provided. There is no argument that the
`Hirayama grounds we'll be discussing today teach this limitation.
`
`Limitation 1B is that the representation consists of only one option for
`activating the function. Here again there is no argument that the Hirayama
`grounds teach this limitation.
`
`
`
`6
`
`
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`Limitation 1C is a bit longer but still reasonably straightforward. This
`
`limitation states that "the function is activated by a multi-step operation
`comprising step one, an object touching the touch sensitive area at a location
`where the representation is provided." There is no dispute that Hirayama
`grounds teach this first step.
`
`Step two of the multi-step gesture is that "the object glides along the
`touch sensitive area away from the touch location." Here Patent owner has
`raised an issue regarding the meaning of this limitation. To be clear, there is
`no dispute that the object recited here is, for example, a user's finger or a
`pen-type stylus. It is a physical object used to contact the touch sensitive
`area of the mobile handheld computer unit.
`
`So the question being asked is what does it mean in the context of
`these claims and this patent for a finger or stylus to glide along the touch
`sensitive area away from the touch location?
`
`Finally, limitation 1D recites that "the representation of the function is
`not relocated or duplicated during the gliding." Clearly, this final wherein
`clause is a negative limitation and is about what is not done with the
`representation that is provided on the touch sensitive area.
`
`Petitioners submit that the second step of limitation 1C is about
`physical contact with the touch sensitive area and limitation 1D is about
`what is and is not displayed as a result, but we'll discuss that in greater detail
`in a few slides.
`
`Obviously, it's important to understand the context in which these
`claims are presented so let's take a brief look at the broader disclosure
`alleged to support these claims limitations.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`7
`
`
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`On Slide 9 we see Figure 1 of the patent and excerpts of the associated
`
`description. Here the '879 patent tells us that the mobile handheld computer
`unit for which its user interface is intended includes a touch sensitive area 1,
`which is divided into a menu area 2 highlighted in blue and a display area 3
`highlighted in red.
`
`In this example implementation the menu area is shown at the bottom
`of the computer unit's touch sensitive area 1 and it presents three
`representations of functions 21, 22 and 23. These can represent things like a
`keyboard function, which is number 22 in the middle.
`
`If you could please turn to Slide 10 you'll see Figures 1 and 2 shown
`next to each other on the left. The '879 patent says that Figure 2 illustrates
`the activation of a function. Neonode agrees that the illustration provided in
`Figure 2 and associated description in Column 4 that is here on Slide 13 is
`the support in the '879 patent for the claimed multi-step operation.
`
`What we see on the right is the totality of the relevant description and
`it's quite brief. The patent says that "any one of these three functions 21, 22,
`23 can be activated when the touch sensitive area 1 detects a movement of
`an object 4 with its starting point A within the representation of a function
`on the menu area 2 and with the direction B from the menu area to the
`display area 3."
`
`Note that the patent describes what is shown in Figure 2 as a
`movement. Neither here nor anywhere else in the patent outside of the
`claims will you find the word glide. That's because glide was the word
`brought into the claims after the patent application was filed as part of the
`prosecution history.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`8
`
`
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`The first time we see it used is as part of an amendment in the Office
`
`Action Response submitted in September of 2008, more than six years after
`the patent application was filed.
`
`As Ms. Miller will describe in greater detail, the applicant
`interchangeably used a number of different words to characterize the
`movement described here in Column 4, such as sweep, swipe, rub and glide.
`
`So let's take stock. What are we actually shown here in Figure 2? We
`are shown the user's finger, which is labeled object 4, touches and physically
`interacts with the touch sensitive area of the mobile computer unit. We are
`not shown how the user interface that's displayed on the touch sensitive area
`reacts to the user's touch.
`
`We are also not told any more than what we see here about how the
`system distinguishes this movement, like whether the speed or distance of
`the movement matters.
`
`If we turn to Slide 11, we see where the patent actually describes what
`is displayed after activating the functions in the menu area. Each figure
`illustrates its -- what is displayed in the display area after one of the three
`example functions is activated.
`
`Importantly, none of these nor any other figures illustrate what is or is
`not displayed during the claimed multi-step operation. Thus, the final
`wherein clause of Claim 1 rests on the absence of disclosure. That is the '879
`patent does not actually explicitly teach that the representation of the
`function is not relocated or duplicated during the gliding.
`
`Let's keep that in the back of our mind as we later evaluate Hirayama
`and the grounds. Before turning to Hirayama though, let's talk about the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`9
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`claim construction issue raised by Neonode so that we make sure we're on
`the same page about the proper scope of the claims.
`
`Highlighted in red on Slide 13 is the limitation I noted earlier as
`giving rise to Neonode's claim construction argument. The limitation at issue
`recites, "the object," which can be either a finger or stylus, "gliding along the
`touch sensitive area away from the touch location." These are pretty
`straightforward terms, and we've already seen what little the '879 patent has
`to say about them so let's see what the Patent Owner says.
`
`As we see on Slide 14, Neonode has made two subtly different
`arguments between the POR and its Sur-reply. In the POR Neonode argues
`that through remarks applicant made during the prosecution history the
`applicant allegedly established that the claimed gliding-away gesture is
`different from a conventional drag-and-drop operation. Thus, Neonode is
`arguing that a conventional drag-and-drop operation was disavowed or
`disclaimed from the scope of the claim's gliding-away gesture.
`
`In so doing Neonode seeks to invoke the high bar of prosecution
`disavowal
`
`Then for the first time in the Sur-reply Neonode focuses exclusively
`on the word "glide," not the broader phrase "gliding away," and it tends to
`simply contrast connotations of the word "gliding" and "dragging." I'm
`going to walk you through the first of these arguments, and my colleague
`Ms. Miller will talk on the second.
`
`To address Neonode's arguments from the POR about disavowal, let's
`turn to Slide 15. But instead of immediately sorting through the extensive
`prosecution history let's first determine whether the distinction that Neonode
`is seeking to draw actually makes any sense in the first place, because even
`
`
`
`10
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`if we accept that Neonode successfully disavowed a conventional drag-and-
`drop operation as they allege, we would still need to understand what it
`means in order to be able to consider it with respect to the prior art.
`
`So what's the difference between gliding away and conventional drag
`and drop? Well, as we can see here, that's a bit murky. The only difference
`between gliding away and conventional drag and drop that Neonode's expert
`Dr. Rosenberg is able to identify is that "a drag and drop, that with a drag
`and drop a user generally perceives some form of an object/function as
`behaving as if it is being dragged by the movement of the stylus/pen."
`
`As Dr. Rosenberg admits at the top of this excerpt the user's actual
`physical gesture for each of these can be the same, but the user nonetheless
`perceives some difference with respect to how the system responds.
`
`JUDGE OGDEN: Mr. Holt, does this to some extent invoke the last
`limitation of Claim 1 that deals with what is represented during the gliding
`operation? So, in other words, could the perception that a user has in the
`course of performing this gesture be affected by what they see on the screen
`and whether there is an icon that is actually relocated or duplicated?
`
`MR. HOLT: Yes, that could be one of the ways of the perception
`certainly, but Neonode has made clear in their arguments, as has Dr.
`Rosenberg, their expert, that the movement of the icon itself is not actually
`required. So if you see at the bottom sentence of Paragraph 67 it says,
`"sometimes an operating system provides visual feedback by actually
`showing the object moving on a screen together with the stylus /pen."
`
`That would be the wherein clause at the end of the claim. But they're
`actually saying that this perception could be broader and instead of visually
`displaying the icon being relocated or duplicated during the movement there
`
`
`
`11
`
`
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`may be some other not moving of the icon that would somehow be perceived
`by the user as dragging, and yet it's not at all clear what that thing is beyond
`an actual visual feedback that's talked about with respect to the wherein
`clause.
`
`Does that answer your question, Your Honor?
`
`JUDGE OGDEN: Yes, thank you. So just so I understand, I take it
`then that you're discussing the parts of Claim 1 other than 1D and the issue
`of whether Steps 1A, or parts 1A through 1C themselves are, you know,
`when it would encompass a drag-and-drop operation?
`
`MR. HOLT: That's correct, Your Honor. 1D we view as separate and
`still required, certainly, as needing to be shown, but we actually believe that
`1D is there for a reason in order to actually be able to designate what is or is
`not displayed, whereas the gesture multi -step operation as it's described in
`the claim in 1C actually doesn't have anything to do with the response of the
`system but is instead about simply how the user physically interacts with the
`device.
`
`JUDGE OGDEN: Okay, thank you.
`
`MR. HOLT: So to touch on that, if we turn to Slide 16 we see that
`Petitioners and their expert Dr. Bederson propose a much simpler and easier
`to evaluate plain reading of this language that's consistent with the
`specification of the '879 patent.
`
`The second step of the multi-step operation, which we see in the first
`line of the boxed language at the top, is about how the object physically
`touches the mobile handheld computer unit. This leaves determining the
`limitation's metes and bounds simple and straightforward.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`12
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`A POSITA would simply evaluate whether the claimed object, such as
`
`a finger or stylus, is in contact with the touch sensitive area as it moves from
`the location where the object touched the display to another location on the
`display.
`
`The wherein clause of limitation 1D that is shown in the second line
`of the boxed text at the top is left equally easy to evaluate. During the
`physical touch of a computer unit, a POSITA would determine whether the
`icon is visually duplicated or relocated on a touch sensitive area.
`
`In contrast, Neonode's construction of the second step of the multi-
`step gesture would actually render the final wherein clause superfluous. If
`the "gliding away" limitation already excludes even the perception of
`dragging as Neonode contends, then it certainly excludes actual dragging.
`
`Thus, there would have been no need for the examiner to have
`required this final wherein clause to have been added in order to allow the
`claims.
`
`So Neonode's proposal would not only lead to a construction that has
`uncertain metes and bounds but would also render a key portion of the claim
`that led to allowance duplicative.
`
`But as it turns out, Your Honors don't even need to grapple with all of
`that because as you'll see starting on Slide 17, none of the statements from
`the prosecution history actually meet the high bar of disavowal.
`
`As we see here from the precedential Thorner case, the words of a
`claim were generally given their ordinary and customary meaning as
`understood by a POSITA when read in the context of the specification of
`prosecution history. But the POR does not try to establish that the ordinary
`and customary meaning of the phrase "gliding away" would have otherwise
`
`
`
`13
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`been understood by a POSITA as excluding drag and drop, nor does the
`Patent Owner suggest that the phrase gliding away is defined in this
`specification.
`
`And as we noted earlier, the word gliding is nowhere to be found in
`the '879 patent. Rather the POR is arguing outright that the scope of the
`claim is shaped by disclaimer, but the case law tells us that the disclaimer
`rises from clear and unmistakable statements by the applicant during
`prosecution.
`
`None of the statements Neonode points to here are so unambiguous,
`particularly when taken into context. Most of the statements to which
`Neonode points in their POR to support their disclaimer argument are from
`an Office Action response submitted in February 2010, which is at Pages
`163 to 173 of Exhibit 1003.
`
`We invite Your Honors to read the entire response as the broader
`context makes clear the distinctions applicant was actually making, however,
`the excerpts we provide on the next few slides are representative.
`
`As you see starting at the top of this excerpt on Slide 18, applicant
`sought to distinguish the Hoshino reference by focusing on the fact that
`Hoshino required a hard press to activate the function of an icon. Quote,
`"Applicant respectfully submits that unlike the claimed invention, Hoshino
`activates the function solely in response to a push-in operation, i.e., a hard
`touch and not in response to a drag operation," end quote.
`
`The applicant even illustrated the key distinction as we see at the
`bottom. There applicant notes that it is the hard press prior to dragging that
`leads to activation. I also want to note here that applicant admitted that
`Hoshino teaches gliding.
`
`
`
`14
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`As you see on the lower right, the applicant characterized Hoshino as
`
`teaching a touch which leads to an activation and then a glide after the
`activation. In other words, the applicant used the word gliding to describe
`Hoshino's dragging but now is arguing that Hoshino's dragging is somehow
`disclaimed from the word gliding.
`
`Is that really a clear and unmistakable disavowal? No. What we see
`here actually illustrates the opposite of their position. It shows the applicant
`was using the words gliding and dragging interchangeably.
`
`On Slide 19 we see the entire table from the -- which the POR
`excerpted a single row. Here again, when we look at the whole table in
`context, we see it was really the hard touch for a function activation that
`allegedly differentiates Hoshino from the claims.
`
`If we assume Neonode is correct and the distinctions drawn in this
`table necessarily rise to the level of disclaimer, why wouldn't it also apply to
`the second row of the table? In the second row of alleged distinctions, the
`hardware is a touchscreen in the claimed invention and a touch screen with a
`pressure sensor in Hoshino.
`
`Does that mean that this table disavows touchscreens with pressure
`sensors? Of course not, neither does the first row disavow drag and drop.
`
`Turning to Slide 20, we see another part of the response Neonode has
`attempted to rely upon for their alleged disclaimer. Here, after having argued
`that Hoshino does not teach the claimed multi-step gesture, the response is
`arguing that such a gesture also would not have been obvious based on the
`combination with Nakajima.
`
`What we know about cases where disclaimer is found is that the
`applicant directly and clearly distinguishes specific claim language from an
`
`
`
`15
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`alleged distinct teaching in the prior art. That's not what we see here. These
`sentences don't distinguish the claim language.
`
`Instead, as we see in the full context, they distinguish Hoshino from
`Nakajima and thus demonstrate that the two references cannot be combined
`in the manner contemplated by the examiner. These arguments are not clear
`and unambiguous statements of disavowal. They're arguments against the
`combinability of two references that aren't otherwise part of this IPR.
`
`Do Your Honors have any questions about Patent Owner's alleged
`disavowal? Okay. Then I will hand things off to my colleague, Ms. Miller.
`
`MS. MILLER: Thank you, Mr. Holt.
`
`Good afternoon, Your Honors. I'm Tiffany Miller, and I'll pick up
`where Mr. Holt left off to address Patent Owner's second claim construction
`argument which is, again, with respect to the second step of limitation 1C of
`the claim.
`
`If I could ask you to turn to Slide 21 in Petitioners' demonstratives,
`Patent Owner argues in their Sur-reply for the first time in this proceeding
`that Hirayama's disclosure of movement or dragging of the pen along the
`surface of the touchscreen does not disclose the claimed gliding.
`
`First off, this argument should be rejected as untimely and
`unsupported by any evidence. Substantively, Patent Owner latches onto the
`repetition of the word drag in the Hirayama reference. But Petitioners need
`not show that Hirayama uses the same language as the challenged claim.
`
`The Federal Circuit has acknowledged this, for example, in the In re
`Gleave case, which is at 560 F.3d. 1331. Patent Owner, excuse me, argues
`there is allegedly some difference between dragging and the plain meaning
`of gliding, but they fail to articulate any specific meaning for the term
`
`
`
`16
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`gliding. They also fail to articulate any relevant distinction between gliding a
`pen or finger and dragging a pen or finger.
`
`Instead, Patent Owner uses an analogy to support their claim
`construction argument of dragging a sack of bricks compared with the
`gliding of a figure skater. But this shows how misplaced Neonode's
`argument is because it bears no relevance to the context of the claims, which
`is the movement of a pen or finger along the surface of a touch sensitive
`area.
`Relatedly, Patent Owner's new argument points to a claim amendment
`
`at Page 326 in the file history. We have this at Petitioners' Slide 56. Now,
`Patent Owner alleges that changing the word moving to the word gliding
`presumes that gliding has a different meaning, but Neonode fails to
`articulate any relevant difference between moving and gliding for this
`proceeding.
`
`Also, the amendment did not simply change the word moving to the
`word gliding. You can see this on Slide 56 at the previous claim line which
`recited a single step of an object moving in a direction.
`
`But that was changed to add not just the term gliding but also that the
`gliding occurs along the touch sensitive area. This is something that
`Neonode emphasized throughout the remainder of the file history.
`
`And with that emphasis in mind, if I could have you turn to Slide 37?
`Here you can see from comparison of the '879 patent disclosure on the left
`and the Hirayama prior art on the right, that they were both concerned with
`the same thing for this gesture that's going to activate a function.
`
`The start of the gesture, underlined in blue in both disclosures, is
`touching an object such as a pen down onto a representation of the function
`
`
`
`17
`
`
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`or desired icon in the menu area in blue. Referring to the underlying
`language in red, both disclosures talk about then movement of the finger or
`pen along the surface of the touch sensitive area, the display area, without
`being separated from the touch sensitive surface.
`
`So in both disclosures this is how the user interface, or excuse me, this
`is how the user interacts with the device to activate a function, that is the
`finger pen is moved along the surface of the touch sensitive area while
`maintaining contact with that surface.
`
`Now as mentioned earlier, the '879 patent does not use the term
`gliding or glide. And Neonode agrees that the excerpt from the '879 patent
`on the left of this demonstrative discloses the claimed gliding. If that is the
`case, then the almost identical disclosure in Hirayama must also disclose the
`claimed gliding.
`
`If I could have you turn to Slide 22, Patent Owner's new argument
`about dragging versus gliding is actually contrary to the opinion of their own
`expert, who admitted that the user's action when dragging a pen finger is the
`same as gliding a pen or finger. That's at Pages 134 through 135 of his
`deposition.
`
`Patent Owner's arguments also misrepresent and are contrary to the
`file history. Patent Owner argues the applicant allegedly emphasized the
`claimed gliding away is not just any movement but a gliding or swiping
`gesture.
`
`But the statements in the file history relied on by Patent Owner do not
`distinguish gliding from dragging or any other kind of movement, and, in
`fact, equate gliding with dragging.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`18
`
`
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`In the file history at Pages 357 and 269, which were cited by Patent
`
`Owner, the applicant uses the terms moving, gliding, swiping and also
`rubbing and sliding to refer to the same action shown in the patent's Figure
`2.
`So here we have the applicant throwing around a bunch of terms, none
`
`of which the applicant attempts to distinguish from the dragging of a pen,
`such as that disclosed by Hirayama.
`
`And as mentioned by my colleague during prosecution of the '879
`patent, Neonode called Hoshino's drag action a glide. That's at Pages 169
`through 170. And you will also see at Page 127 of the file history Neonode
`characterizing what they called a drag action in the Hirshberg reference as
`the claimed touch and glide operation.
`
`So here we have in applicant's own words an admission that dragging
`a finger is the same as the claimed gliding. So it is disingenuous for
`Neonode to now take issue with any alleged difference between gliding and
`dragging of an object such as a pen along the surface of a touchscreen.
`
`If there are no questions on this claim construction issue, I'll move on
`to Hirayama. If I could draw your attention to Slide 27, I have an excerpt of
`Hirayama's from Column 1 and Hariyama's Figures 3A and 3B showing the
`disclosed user interface.
`
`Now, note that Hirayama is a US patent that claims priority to a
`Japanese patent application. You can see this on the cover sheet of the
`patent, which means the US specification is a translation of that Japanese
`priority application. And I point this out because the grammar in the
`Hirayama reference can be somewhat challenging at times.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`19
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`Now as you can see in the excerpt of Hirayama on the slide in the
`
`center, one of the stated objectives of Hirayama is to activate or deactivate a
`designated function by the user when the user drags a pen. So this activation
`of a designated function when the user drags a pen, that is the multi-step
`operation of the challenged claim.
`
`The second objective of Hirayama is the ability to designate the
`starting or ending position of a dragging operation in natural fashion. This is
`achieved with the pen and the cursor 42, shown in the figures, which is
`shown at the position of the pen tip on the tablet in bo
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
