Trials@uspto.gov
`571-272-7822
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`Paper 26
`Entered: December 3, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
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`SAMSUNG ELECTRONICS CO. LTD, SAMSUNG ELECTRONICS
`AMERICA, INC., and APPLE INC.,
`Petitioner,
`v.
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`____________
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`
`
`IPR2021-00144
`Patent 8,095,879 B2
`____________
`
`
`Before MICHELLE N. ANKENBRAND, KARA L. SZPONDOWSKI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`ANKENBRAND, Administrative Patent Judge.
`
`
`DECISION
`Granting Petitioner’s Request on Rehearing
`37 C.F.R. § 42.71(d)
`Granting Institution of Inter Partes Review
`37 C.F.R. § 314
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`571-272-7822
`
`Paper 26
`Entered: December 3, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SAMSUNG ELECTRONICS CO. LTD, SAMSUNG ELECTRONICS
`AMERICA, INC., and APPLE INC.,
`Petitioner,
`v.
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`____________
`
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`____________
`
`
`Before MICHELLE N. ANKENBRAND, KARA L. SZPONDOWSKI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`ANKENBRAND, Administrative Patent Judge.
`
`
`DECISION
`Granting Petitioner’s Request on Rehearing
`37 C.F.R. § 42.71(d)
`Granting Institution of Inter Partes Review
`37 C.F.R. § 314
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`IPR2021-00144
`Patent 8,095,879 B2
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`I.
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`INTRODUCTION
`
`On November 6, 2020, Samsung Electronics Co. Ltd., Samsung
`Electronics America, Inc. and Apple Inc. (collectively, “Petitioner”) filed a
`petition requesting an inter partes review (“Petition”) of claims 1–6 and
`12–17 (“challenged claims”) of U.S. Patent No. 8,095,879 B2 (“the ’879
`patent,” Ex. 1001).
`We issued a Decision Denying Institution of Inter Partes Review on
`June 15, 2021 (Paper 24, “Decision” or “DI”). Specifically, we determined
`that Petitioner failed to establish a reasonable likelihood of prevailing with
`respect to at least one of the challenged claims under the following asserted
`grounds:
`Claim(s) Challenged
`1, 14–17
`2–5
`3
`6, 13
`12
`1, 2, 4, 5, 14–17
`3
`6, 13
`12
`
`Reference(s)/Basis
`Ren, 1 Tanaka2
`Ren, Tanaka, Hirayama3073
`Ren, Tanaka, Hirayama307,
`Hirayama8784
`Ren, Tanaka, Allard5
`Ren, Tanaka, Henckel6
`Hirayama307, Ren
`Hirayama307, Ren,
`Hirayama878
`Hirayama307, Ren, Allard
`Hirayama307, Henckel
`
`35 U.S.C. §
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
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`1 Xiangshi Ren & Shinji Moriya, Improving Selection Performance on Pen-
`Based Systems: A Study of Pen-Based Interaction for Selection Tasks,
`7 ACM Transactions on Computer-Human Interaction 384–416 (2000)
`(Ex. 1004).
`2 U.S. Patent No. 5,249,296, issued Sept. 28, 1993 (Ex. 1005).
`3 U.S. Patent No. 5,406,307, issued Apr. 11, 1995 (Ex. 1006).
`4 U.S. Patent No. 6,100,878, issued Aug. 8, 2000 (Ex. 1009).
`5 U.S. Patent No. 5,615,384, issued Mar. 25, 1997 (Ex. 1010).
`6 U.S. Patent No. 5,463,725, issued Oct. 31, 1995 (Ex. 1013).
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`IPR2021-00144
`Patent 8,095,879 B2
`Claim(s) Challenged
`1, 14, 15
`DI 2, 7, 27.
`On July 15, 2021, Petitioner filed a Request for Rehearing (Paper 25,
`“Rehearing Request” or “Reh’g Req.”) of our Decision regarding the
`grounds relying on Hirayama307 as the primary reference. Reh’g Req. 1 &
`n.1. Petitioner contends that we misapprehended Hirayama307’s teachings
`with respect to claim 1’s limitation “wherein the representation of the
`function is not relocated or duplicated during the gliding.” See generally id.;
`Ex. 1001, 6:57–59; see also DI 6 (reproducing claim 1).
`Specifically, Petitioner contends that we misapprehended the claim
`language by (1) equating Hirayama307’s icon 41 with window 43, Reh’g
`Req. 1, and (2) relying on portions of Hirayama307 that illustrate actions
`that occur after and not “during the gliding,” as recited in claim 1. 8 Id.
`We have considered Petitioner’s arguments and conclude that we
`misapprehended the teachings of Hirayama307 and that the Petition sets
`forth sufficient arguments and evidence to establish a reasonable likelihood
`that Petitioner will prevail on its Hirayama307 related grounds. We,
`therefore, grant Petitioner’s Rehearing Request and institute an inter partes
`review of claims 1–6 and 12–17 of the ’879 patent.
`
`35 U.S.C. §
`103(a)
`
`Reference(s)/Basis
`Jermyn7
`
`
`7 Ian Jermyn et al., The Design & Analysis of Graphical Passwords, in
`Proceedings of the 8th USENIX Security Symposium (1999) (Ex. 1014).
`8 Petitioner does not present arguments relating to either the grounds relying
`primarily on Ren or the ground relying on Jermyn. Thus, this decision does
`not address those grounds.
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`IPR2021-00144
`Patent 8,095,879 B2
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`II. ANALYSIS
`Standard of Review
`A.
`A request for rehearing must identify specifically all matters the party
`believes the Board misapprehended or overlooked, and the place where each
`matter was previously addressed in a motion, an opposition, or a reply.
`37 C.F.R. § 42.71(d). Petitioner, as the party challenging the Decision, has
`the burden of showing that we should modify the Decision. Id. When
`rehearing a decision on a petition, we review the decision for an abuse of
`discretion. Id. § 42.71(c). “An abuse of discretion occurs if the decision
`(1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an
`erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or
`(4) involves a record that contains no evidence on which the Board could
`rationally base its decision.” Redline Detection, LLC v. Star Envirotech,
`Inc., 811 F.3d 435, 442 (Fed. Cir. 2015).
`B. Obviousness over Hirayama307
`In the Decision, we determined that Petitioner failed to show
`sufficiently that Hirayama307 discloses claim 1’s limitation “wherein the
`representation of the function is not relocated or duplicated during the
`gliding.” DI 18–19. We further determined that Petitioner failed to show a
`reasonable likelihood of prevailing in its assertions as to claims 2–6 and
`12–17 based on our determination as to claim 1. Id. at 20–21 (finding that
`Petitioner failed to meet its burden as to claims 2, 4, and 14–17 because
`these claims ultimately depend from claim 1, and that Petitioner’s additional
`asserted art for its challenges to claims 3, 6, 12, and 13 does not remedy the
`deficiencies with respect to claim 1). Below, we first address claim 1 and
`then turn to claims 2–6 and 12–17.
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`IPR2021-00144
`Patent 8,095,879 B2
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`Claim 1
`1.
`Petitioner’s arguments on rehearing are solely directed to our analysis
`of the limitation “wherein the representation of the function is not relocated
`or duplicated during the gliding” (the “limitation at issue”) as it relates to
`Hirayama307. 9 In the Decision, we found that Petitioner failed to make a
`sufficient showing that Hirayama307 discloses the limitation at issue
`“because Hirayama307 appears to disclose either relocating or duplicating
`the icon on the screen’s display.” DI 18. In reaching our determination, we
`primarily relied upon Hirayama307’s Figures 3B, 4A, and 4B, as well as
`Hirayama307’s disclosure regarding icon 41 and large icon or window 43.
`Id. at 18–19 (citing Ex. 1006, 5:3–12, 6:22–31). We reproduce Figure 3B
`below, as it is relevant to our discussion of Petitioner’s arguments on
`rehearing.
`
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`9 Although Petitioner argued in the Petition that the limitation at issue was
`alternatively obvious over the combination of Hirayama307 and Ren,
`Petitioner does not challenge our findings regarding that combination in the
`Rehearing Request, and we do not address that alternative argument in this
`decision.
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`IPR2021-00144
`Patent 8,095,879 B2
`Figure 3B illustrates a display screen of Hiryama307’s device. Ex. 1006,
`2:48–51. Hirayama307 explains that, after the user moves the pen point
`from icon 41 to display portion 3, “an icon (hereinafter . . . referred to as a
`window) enlarged in the form of the processing display mode of the desired
`icon 41 is automatically displayed on the display portion 1 as shown in FIG.
`3B.” Id. at 5:3–12.
`Petitioner argues on rehearing that icon 41 corresponds to the
`“representation of a function.” Reh’g Req. 4 (citing Pet. 59). This icon,
`Petitioner argues, is not the same as window 43. Id. at 8–9. Thus, Petitioner
`contends that we “misapprehended Hirayama307’s teachings by . . . equating
`icon 41 with ‘enlarged icon’ or ‘large icon’ (as depicted in FIG. 3B), which
`Hirayama through the specification refers to as window 43.” Id. at 7–8.
`Petitioner continues “that the ‘representation of the function’—i.e., the
`icon 41 ‘is not relocated or duplicated during the gliding’” as the limitation
`at issue requires. Id. at 9. Petitioner further submits that even if we believe
`that certain aspects of Hirayama307’s disclosure suggest duplicating icon 41
`in the form of window 43, such teaching is not explicit and constitutes a fact
`issue that should be resolved during trial. Id. at 10.
`In response to Petitioner’s argument that Hirayama307 discloses the
`limitation at issue, Patent Owner argues that a person of ordinary skill in the
`art would have understood that icon 41 was “dragged and dropped,” as was
`“typical in computer user interfaces as of 2002.” Paper 23 at 37 (citing
`Ex. 2001 ¶ 100). Patent Owner further argues that an ordinarily skilled
`artisan would have understood that icon 41 was relocated or duplicated
`because Hirayama307’s system “Enlarge(s) [the] icon as a window.” Id. at
`39–40 (citing Ex. 2001 ¶ 103).
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`IPR2021-00144
`Patent 8,095,879 B2
`Having reconsidered the parties’ arguments, we agree with Petitioner
`that we misapprehended Hirayama307’s distinction between icon 41 and
`window 43 and, as a result, misapprehended the Petition’s arguments related
`to icon 41. Specifically, Hirayama307 discloses that window 43 appears
`“after having touched the desired icon 41 with the point of the pen 3,” and
`that window 43 is “the processing display form” of icon 41. Ex. 1006,
`5:64–66. Thus, contrary to our determination in the Decision that
`“Hirayama307 appears to duplicate or relocate the representation of the
`function, i.e., icon, during gliding,” a closer reading of Hirayama307
`indicates that icon 41 and window 43 are different, though Hirayama307 at
`times uses the term “large icon” or “enlarged icon” to describe window 43.
`See, e.g., Ex. 1006, 6:7–14, 6:22–23, 6:30. We acknowledge that Patent
`Owner disagrees with Petitioner, but we find that the parties’ disagreement
`raises an issue of fact that is best resolved on a full trial record.
`Accordingly, we determine that Petitioner shows sufficiently at this stage of
`the proceeding that Hirayama307 discloses the limitation “wherein the
`representation of the function is not relocated or duplicated during the
`gliding.” In light of this determination, we need not address Petitioner’s
`additional arguments related to whether Hirayama307 discloses the
`limitation at issue. 10
`We further determine on the record before us that Petitioner sets forth
`sufficient arguments and evidence that Hirayama307 discloses the remaining
`
`10 Patent Owner’s remaining arguments in the Preliminary Response
`regarding the Hirayama307 grounds relate to Petitioner’s alternative
`contention that Hirayama307 and Ren disclose the limitation at issue. We
`need not address those arguments because we find that Petitioner shows
`sufficiently at this stage of the proceeding that Hirayama307 alone discloses
`the limitation at issue.
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`IPR2021-00144
`Patent 8,095,879 B2
`limitations of claim 1. See Pet. 49–60. At this stage of the proceeding,
`Patent Owner’s arguments regarding claim 1 are confined to the limitation at
`issue, and so Patent Owner does not specifically challenge Hirayama307’s
`disclosure as it relates to the remaining limitations of claim 1. Paper 23 at
`36–49.
`
`Claims 2–6 and 12–17
`2.
`Petitioner challenges claims 2–6 and 12–17 by adding the teachings of
`Ren, Hirayama878, Allard, or Henckel to the teachings of Hirayama307.
`Pet. 1–2, 49–74. Patent Owner does not separately address the dependent
`claims in its Preliminary Response. Paper 23 at 50. We have reviewed
`Petitioner’s evidence, including the relevant portions of Dr. Bederson’s
`testimony and Petitioner’s arguments that a person of ordinary skill in the art
`would have had reason to combine the prior art disclosures. See Pet. 49–74
`(and evidence cited therein). Based on the current record, we find that
`Petitioner also demonstrates a reasonable likelihood of prevailing in its
`obviousness challenge with respect to claims 2–6 and 12–17.
`C. Considerations under Section 314(a)
`We have discretion to deny a petition for inter partes review under
`§ 314(a). See 35 U.S.C. § 314(a) (“The Director may not authorize an inter
`partes review to be instituted unless . . . .”); Cuozzo Speed Techs., LLC v.
`Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a
`petition is a matter committed to the Patent Office’s discretion.”); Harmonic
`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“First of all,
`the PTO is permitted, but never compelled, to institute an IPR proceeding.”
`(citing 35 U.S.C. § 314(a))). When deciding whether to exercise our
`discretion, we may consider the number of claims and grounds that meet the
`reasonable likelihood standard and whether, in the interests of efficient
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`IPR2021-00144
`Patent 8,095,879 B2
`administration of the Office and integrity of the patent system, the entire
`petition should be denied. Deeper, UAB v. Vexilar, Inc., IPR2018-01310,
`Paper 7 at 42 (PTAB Jan. 24, 2019) (informative); SAS Q&A’s, Part D,
`Effect of SAS on Future Challenges that Could Be Denied for Statutory
`Reasons, D2 (June 5, 2018), available at https://www.uspto.gov/sites/
`default/files/documents/sas_qas_20180605.pdf.
`Here, Petitioner demonstrates a reasonable likelihood of prevailing on
`its challenges involving Hirayama307, which address all challenged claims.
`On this record, and based on the particular facts of this proceeding, we find
`that instituting a trial is an efficient use of the Board’s time and resources.
`D. Conclusion
`For the foregoing reasons, we grant Petitioner’s Rehearing Request
`and determine that Petitioner demonstrates a reasonable likelihood that at
`least one challenged claim of the ’879 patent is unpatentable over the prior
`art of record. Accordingly, we institute an inter partes review of all claims
`on all grounds asserted in the Petition. 11
`III. ORDER
`
`It is:
`ORDERED that Petitioner’s Request for Rehearing is granted;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter
`partes review of claims 1–6 and 12–17 of the ’879 patent is instituted with
`
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`11 In the Rehearing Request, Petitioner “withdraws Grounds 1A–1E and 3
`[i.e., the grounds relying primarily on Ren or Jermyn] and stipulate[s] not to
`pursue these grounds in any proceeding that is instituted from this rehearing
`request. In this regard, Petitioner[] promote[s] narrowed focus on the merits
`of Ground 2 [the Hirayama307 grounds] only.” Reh’g Req. 1 n.1.
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`IPR2021-00144
`Patent 8,095,879 B2
`respect to all grounds of unpatentability asserted in the Petition commencing
`on the entry date of this decision; and
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial.
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`IPR2021-00144
`Patent 8,095,879 B2
`FOR PETITIONER:
`W. Karl Renner
`David Holt
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`holt2@fr.com
`
`Tiffany Miller
`James Heintz
`DLA PIPER LLP
`tiffany.miller@dlapiper.com
`jim.heintz@dlapiper.com
`FOR PATENT OWNER:
`Robert Asher
`Bruce Sunstein
`Timothy Murphy
`Arne Hans
`SUNSTEIN LLP
`rasher@sunsteinlaw.com
`bsunstein@sunsteinlaw.com
`tmurphy@sunsteinlaw.com
`ahans@sunsteinlaw.com
`
`11
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