`Trials@uspto.gov
`571-272-7822
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`Paper 59
`Date: December 15, 2022
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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.
`
`IPR2021-00144
`Patent 8,095,879 B2
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`
`
`Before KARA L. SZPONDOWSKI, CHRISTOPHER L. OGDEN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
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`I. INTRODUCTION
`
`Petitioners Samsung Electronics Co. Ltd., Samsung Electronics
`America, Inc., and Apple Inc. (collectively, “Petitioner”) filed a Petition
`(Paper 6, “Pet.”) for inter partes review of claims 1–6 and 12–17 of U.S.
`Patent No. 8,095,879 B2 (Ex. 1001, “the ’879 patent”). The Board initially
`denied the Petition (Paper 24, “Dec.”). However, after Petitioner filed a
`Request for Rehearing (Paper 25, “Reh’g Req.”), the Board reconsidered its
`position and granted inter partes review. (Paper 26, “Reh’g Dec.”). The
`parties later agreed, by stipulation, to limit the scope of the Petition to four
`grounds challenging claims 1–6 and 12–17. Paper 50.
`Patent Owner Neonode Smartphone LLC (“Neonode”) filed a Patent
`Owner Response under seal (Paper 37, “PO Resp.”; public redacted version
`as Ex. 1048), Petitioner filed a Reply to the Patent Owner Response (Paper
`41, “Pet. Reply”), and Neonode filed a Sur-reply under seal (Paper 49, “PO
`Sur-reply”; public redacted version as Ex. 1073).
`We held an oral hearing on Sept. 6, 2022, and the transcript is entered
`on the record. Paper 55 (“Tr.”).
`This is a final written decision under 35 U.S.C. § 318(a) as to whether
`the claims challenged in the inter partes review are unpatentable. For the
`reasons below, we conclude that Petitioner has not shown that any claims of
`the ’879 patent are unpatentable.
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`II. BACKGROUND
`
`A. RELATED PROCEEDINGS
`
`The parties identify the following as related matters: Neonode
`Smartphone LLC v. Apple Inc., No. 6:20-cv-00505 (W.D. Tex. filed June 8,
`2020); and Neonode Smartphone LLC v. Samsung Electronics Co. Ltd., No.
`6:20-cv-00507 (W.D. Tex. filed June 8, 2020). Pet. 92–93; Paper 7, 2.
`
`B.
`
`THE ’879 PATENT (EX. 1001)
`
`The ’879 patent relates to a user interface on a mobile handheld
`computer device that has a touch-sensitive display screen divided into a
`menu area and a display area. See Ex. 1001, 1:6–9, code (57). The user
`interface is “specifically adapted to be used with a small computer unit
`where the size of the touch sensitive area is in the order of 2–3 inches” and
`the interface can “be operated by one hand.” Id. at 3:1–6.
`Figure 1 of the ’879 patent, reproduced below, illustrates such a user
`interface:
`
`
`Figure 1 depicts touch-sensitive area 1 on a mobile handheld device.
`Ex. 1001, 3:22–23, 3:51–53. It is divided into menu area 2 and display area
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`3. Id. at 3:53–54. Menu area 2 is a narrow strip along the lower part of
`touch-sensitive area 1 that contains predefined functions 21 (a general
`application-dependent function), 22 (a keyboard), and 23 (a task and file
`manager). Id. at 4:1–6; see also id. at 2:7–10.
`Functions 21, 22, and 23 in menu area 2 “can be activated when the
`touch sensitive area detects a movement of an object with its starting point
`within the representation of the function on the menu area and with a
`direction from the menu area to the display area.” Id. at 1:65–2:5, 2:11–14.
`This method of activation is shown in Figure 2, reproduced below:
`
`
`Figure 2, above, illustrates a touch gesture by which a user may activate
`functions 21, 22, or 23 in area 2. See Ex. 1001, 3:24–25. This gesture begins
`when object 4 (a thumb as shown in Figure 2, but it could be any finger, a
`pen, or another pointing device, id. at 6:11–15) touches the display at point A
`within representation 21, 22, or 23, and moves in direction B away from
`menu area 2 into display area 3. Id. at 4:7–11.
`When a user activates the first function, display area 3 displays icons
`representing services or settings, depending on the current active application.
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`Id. at 2:18–20. Figure 3, reproduced below, illustrates the touch screen after
`function 21 has been activated:
`
`
`Ex. 1001, 3:26. Figure 3, above, shows that after a user activates function 21
`with the gesture as illustrated in Figure 2, display area 3 displays icons 211–
`216, which each represent services or functions depending on the currently
`active application. Id. at 4:12–15. If, for example, the active application
`handles a picture, then the icons showing on display area 3 after a user
`activates the first function can include services such as “save to disk,” “send
`as SMS,” or “delete,” or settings such as “resolution,” “colour,” or
`“brightness.” Id. at 4:24–28.
`Analogously, selecting function 22 activates a keyboard, and selecting
`function 23 activates a library of available applications and files on the
`device. Id. at 4:36–38, 4:63–65, Figs. 5–6. If there is no currently active
`application, the icons may “represent services or settings of the operations
`system of the computer unit, such as background picture, clock alarm 215,
`users 213, help 211, etc.” Id. at 4:29–32.
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`C. CHALLENGED CLAIMS AND GROUNDS
`
`Claim 1, the only independent claim, is as follows:
`1. A non-transitory computer readable medium storing a
`computer program with computer program code, which, when read
`by a mobile handheld computer unit, allows the computer to
`present a user interface for the mobile handheld computer unit, the
`user interface comprising:
`[a] a touch sensitive area in which a representation of a function
`is provided,
`wherein the representation consists of only one option for
`activating the function
`and wherein the function is activated by a multi-step
`operation comprising (i) an object touching the touch
`sensitive area at a location where the representation is
`provided and then (ii) the object gliding along the touch
`sensitive area away from the touched location,
`wherein the representation of the function is not relocated
`or duplicated during the gliding.
`
`[b]
`
`[c]
`
`[d]
`
`Ex. 1001, 6:45–59 (Petitioner’s reference letters added).
`Petitioner initially argued ten grounds for inter partes review, as
`shown in the following table:
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`Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
`1, 14–17
`103(a)1
`Ren, 2 Tanaka3
`2–5
`103(a)
`Ren, Tanaka, Hirayama3074
`Ren, Tanaka, Hirayama307
`3
`103(a)
`Hirayama8785
`6, 13
`103(a)
`Ren, Tanaka, Allard6
`12
`103(a)
`Ren, Tanaka, Henckel7
`1, 2, 4, 5, 14–17
`103(a)
`Hirayama307, Ren
`3
`103(a)
`Hirayama307, Ren, Hirayama878
`6, 13
`103(a)
`Hirayama307, Ren, Allard
`12
`103(a)
`Hirayama307, Henckel
`1, 14, 15
`103(a)
`Jermyn8
`Pet. 1–2.
`
`
`
` 1
`
` 35 U.S.C. § 103(a) (2006), amended by Leahy–Smith America Invents Act,
`Pub. L. No. 112-29 § 103, sec. (n)(1), 125 Stat. 284, 287, 293 (2011)
`(effective Mar. 16, 2013). The ’879 patent issued from an application filed
`on December 10, 2002, which is before the effective date of this amendment
`to section 103. See Ex. 1001, code (22).
`2 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, Sept. 2000, at 384 (Ex.
`1004).
`3 Tanaka, US 5,249,296, issued Sept. 28, 1993 (Ex. 1005).
`4 Hirayama et al., US 5,406,307, issued Apr. 11, 1995 (Ex. 1006)
`(Hirayama307”).
`5 Hirayama, US 6,100,878, issued Aug. 8, 2000 (Ex. 1009)
`(“Hirayama878”).
`6 Allard et al., US 5,615,384, issued Mar. 25, 1997 (Ex. 1010).
`7 Henckel et al., US 5,463,725, issued Oct. 31, 1995 (Ex. 1013).
`8 Ian Jermyn et al., The Design & Analysis of Graphical Passwords, in
`Proceedings of the 8th USENIX Security Symposium (1999) (Ex. 1014).
`
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`With our authorization (Ex. 2037), the parties later stipulated to limit
`the scope of the Petition to the sixth through ninth grounds based on
`Hirayama307. Paper 50; see also Reh’g Req. 1 n.1; PO Resp. 1 n.1.
`
`D. DECLARATORY TESTIMONY
`
`Petitioner submits two declarations of Dr. Benjamin B. Bederson as
`expert testimony. Exs. 1002, 1051; see also Ex. 1002, App’x A (curriculum
`vitae). Petitioner also relies on a declaration of Jacob Robert Munford as to
`Ren’s public availability. Ex. 1031.
`Neonode submits a declaration of Dr. Craig Rosenberg. Ex. 2007; see
`also Ex. 2002 (curriculum vitae). Neonode also submits declarations of Ulf
`Mårtensson (Ex. 2022), Joseph Shain (Ex. 2023), Marcus Bäcklund
`(Ex. 2024), and Per Bystedt (Ex. 2026 under seal; redacted public version as
`Ex. 1049) relating to alleged objective indicia of non-obviousness and the
`early development of touch-screen phones that, according to Neonode,
`embody the challenged claims.
`
`III. GROUNDS OF THE PETITION
`
`For the reasons below, we determine that Petitioner has not shown, by
`a preponderance of the evidence, that claims 1–6 and 12–17 of the ’879
`patent are unpatentable under the extant grounds of the Petition. Before
`analyzing these grounds in detail, we address two matters that will underlie
`our analysis: the level of ordinary skill in the art and the construction we will
`apply to the claim terms.
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`A.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`The level of ordinary skill in the pertinent art at the time of the
`invention is a factor in how we construe patent claims. See Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). It is also one of
`the factors we consider when determining whether a patent claim would
`have been obvious over the prior art. See Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966).
`To assess the level of ordinary skill, we construct a hypothetical
`“person of ordinary skill in the art,” from whose vantage point we assess
`obviousness and claim interpretation. See In re Rouffet, 149 F.3d 1350, 1357
`(Fed. Cir. 1998). This legal construct “presumes that all prior art references
`in the field of the invention are available to this hypothetical skilled artisan.”
`Id. (citing In re Carlson, 983 F.2d 1032, 1038 (Fed. Cir. 1993)).
`For Petitioner, Dr. Bederson testifies that a person of ordinary skill
`“would have had at least a bachelor’s degree in computer science, computer
`engineering, or the equivalent education and at least two years of experience
`in user-interface design and development,” but “[a]dditional years of
`experience could substitute for formal education, and vice versa.” Ex. 1002
`¶ 49.
`
`Testifying for Neonode, Dr. Rosenberg states that for his declaration,
`he “will apply the same definition of the level of skill of a [person of
`ordinary skill in the art]” as Dr. Bederson. Ex. 2007 ¶ 28.
`We find Dr. Bederson’s uncontested articulation to be reasonable in
`light of the subject matter involved in the ’879 patent and the asserted prior
`art. See, e.g., Ex. 1001, 1:49–61 (stating that the ’879 patent addresses
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`technical problems including “to provide a user-friendly interface . . . on a
`small handheld computer unit”). Thus, we adopt it for our decision.
`
`B. CLAIM CONSTRUCTION
`
`In an inter partes review, we construe a patent claim “using the same
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2020). This
`generally includes “construing the claim in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” Id. The ordinary
`and customary meaning of a claim term “is its meaning to the ordinary
`artisan after reading the entire patent,” and “as of the effective filing date of
`the patent application.” Phillips, 415 F.3d at 1313, 1321. There are only two
`circumstances in which a construction departs from the ordinary and
`customary meaning: “1) when a patentee sets out a definition and acts as
`[their] own lexicographer, or 2) when the patentee disavows the full scope of
`a claim term either in the specification or during prosecution.” Thorner v.
`Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Any
`such special meaning of a term “must be sufficiently clear in the
`specification that any departure from common usage would be so understood
`by a person of experience in the field of the invention.” Multiform
`Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998).
`To construe the claim terms, “we look principally to the intrinsic
`evidence of record, examining the claim language itself, the written
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v.
`Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006).
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`Petitioner does not propose any explicit claim constructions in its
`Petition. See Pet. 5–6. Neonode does not propose any explicit constructions
`either, but in its Response, Neonode raises a number of claim construction
`arguments to distinguish the term gliding as it appears in limitation 1c from
`a “drag-and-drop” operation as known in the prior art, to which Petitioner
`responds in its Reply. See PO Resp. 19–33; Pet. Reply 1–9; see also PO Sur-
`reply 7–15. We do not need to construe this term explicitly for our decision,
`and to the extent any terms need construction, we address the terms below in
`the context of the prior art. See Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only
`construe terms ‘that are in controversy, and only to the extent necessary to
`resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`C. CHALLENGE TO CLAIM 1
`
`In the first extant ground of the Petition, Petitioner argues that claims
`1, 2, 4, 5, and 14–17 are unpatentable under 35 U.S.C. § 103(a) as obvious
`over Hirayama307 in view of Ren. Pet. 49–70. For this ground, we focus on
`Petitioner’s challenge to sole independent claim 1 and particularly limitation
`1d (Pet. 60–62), after which we address the remaining claims and the
`remaining grounds.
`A claim is unpatentable under § 103(a) for obviousness if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(2007). When a ground in a petition is based on a combination of references,
`we consider “whether there was an apparent reason to combine the known
`elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`We base our obviousness inquiry on factual considerations including
`(1) the scope and content of the prior art, (2) any differences between the
`claimed subject matter and the prior art, (3) the level of skill in the art, and
`(4) any objective indicia of obviousness or non-obviousness that may be in
`evidence. See Graham, 383 U.S. at 17–18.
`Considering these factors, we determine that Petitioner has not shown,
`by a preponderance of the evidence, that claim 1 is unpatentable under 35
`U.S.C. § 103(a) as obvious over Hirayama307 in view of Ren. We begin
`with an overview of Hirayama307 and Ren.
`
`1.
`
`Hirayama307
`
`Hirayama307 relates to a small data electronic device comprising a
`pen, a display panel, and a transparent touch sensor mounted on the device.
`Ex. 1006, 1:7–10, 2:64–3:6. A user interface shown on the display panel of
`this device is shown in Figure 3A, reproduced below:
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`Ex. 1006, 2:48–51. Figure 3A, shown above, illustrates how a user selects
`and activates, via touch-sensor (input tablet) 2, a telephone dialer operation
`on the display portion 1 of the device. See Ex. 1006, 4:61–63. The user first
`touches telephone icon 41 (having a picture of a telephone to represent a
`dialer operation) with the point of pen 3. Id. at 4:63–65. As the point of pen
`3 approaches the surface of input sensor 2 on the way towards touching icon
`41, x-shaped cursor 42 appears on the screen of display portion 1 so the user
`“can visually confirm the exact position of the point of pen 3 on the input
`tablet 2 very clearly.” Id. at 4:65–5:3.
`After the user touches dialer icon 41 with the point of pen 3, “the user
`moves (i.e. drags) the point of the pen 3 to the display position on the
`surface of the input tablet 2 without being separated therefrom.” Ex. 1006,
`5:3–6. At some point during this pen movement, “an icon [43] (hereinafter
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`. . . 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 5:9–12.
`Figure 4A, reproduced below, is a flowchart of what happens during
`this process:
`
`
`The flowchart in Figure 4A, above, begins when a processor loops until the
`point of pen 3 is touching the surface of input tablet 2 within a
`predetermined area of icon group 40 and until the point of pen 3 has, before
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`the user lifts the pen from the surface, either (a) shifted by a “large”
`reference amount or (b) moved outside a designated area such as hatched
`area 45 (steps S1–S5). Ex. 1006, 5:16–63. If one of these things occurs, then
`in step S6, “icon 41 . . . is enlarged as a window 43 shown in FIG. 3B.” Id.
`at 5:59–66. 9 Then, the processor continues to move enlarged icon/window
`43 along with the tip of pen 3 until the user lifts pen 3 from the surface, at
`which time “the icon is activated so that various processing menus within
`the window 43 can be executed” (steps S7–S9). Id. at 6:3–21.
`Figure 3B, reproduced below, depicts among other things the
`continued dragging of enlarged icon/window 43 along with pen 3 prior to
`the dialer application being activated:
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` Elsewhere, Hirayama also suggests an embodiment in which this
`enlargement of icon 41 to window 43 does not occur until the user “takes the
`point of the pen 3 off from the surface of the input tablet 2.” Ex. 1006, 5:3–
`9; see also id. at 2:10–13 (“[A] circuit converts the icon into a window when
`it is detected that the point of the pen is apart from the display device . . . .”).
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`Figure 3B, above, illustrates later stages of the same user interface as Figure
`3A. See Ex. 1006, 2:48–51, 5:3–12. In the above illustration, arrow B
`depicts the movement of window 43 as “the user moves the point of the pen
`3 in the arrow B direction and drags the pen 3 to the position shown by the
`broken line,” thus causing “the large display icon, i.e. the window 43 [to be]
`moved to the position shown by the broken line in FIG. 3B.” Id. at 6:10–14.
`Hirayama307 also describes a reverse operation in which the user can
`“bring the large icon, i.e. the window 43 displayed on the display portion 1
`as shown in FIG. 3B back to the original position.” Ex. 1006, 6:22–24. To do
`this, the user touches hatched portion 44 of window 43 and “drags the point
`of the pen 3 back to the telephone icon 41 of the original icon group 40
`without being apart from the tablet,” or alternatively, the user may return
`icon/window 43 to a different “predetermined icon in the icon group 40” and
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`then “the window can automatically be stored in the vacant icon position.”
`Id. at 6:24–35.
`In what appears to be another embodiment for returning the dialer
`icon to icon group 40, icon/window 43 is “reduced in size” to icon 41 if the
`user drags the pen either (a) by a “large” amount or (b) outside a designated
`area, after which “the icon displayed as the reduced icon [41] is moved”
`until “the user holds the pen 3 up from the panel surface of the input tablet
`2,” after which “the icon is deactivated” and “moved to the predetermined
`vacant position.” Id. at 6:66–7:6, Fig. 4B.
`
`2.
`
`Ren
`
`Ren is a journal article comparing different pen-based selection
`strategies for use on small, touch-sensitive screens. Ex. 1006, 384–85. One
`of these strategies, called Slide Off, has a variation reproduced below in an
`extracted portion of Figure 3:
`
`
`Ex. 1006, 390. In Figure 3 above, “[t]he arrows show the direction of pen-tip
`movement,” “the dashed lines indicate that the pen-tip is not in contact with
`the screen surface (either before or after contact), and the solid lines . . .
`show that the pen-tip is in contact with the screen surface.” Id. at 389. An
`ellipse represents the target. See id. at 387 & Fig. 1.
`This variation of the Slide Off strategy, described as “a→c→b→a,” is
`where the pen touches a target (a→c), slides off the target (c→a), and then
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`lifts off the screen outside the target (b→a). See id. at 390, Fig. 3. “The
`target is highlighted only while the pen is in contact with it” and “the
`selection is made when the pen is removed from any point on the screen . . .
`outside the target area.” Id. at 391.
`
`3.
`
`Preamble and Limitations 1a–1c
`
`Petitioner argues that Hirayama307 alone discloses the preamble of
`claim 1 and limitations 1a–1c. Pet. 49–60. The preamble recites “[a] non-
`transitory computer readable medium storing a computer program with
`computer program code, which, when read by a mobile handheld computer
`unit, allows the computer to present a user interface for the mobile handheld
`computer unit, the user interface.” Ex. 1001, 6:45–49. To the extent that the
`preamble is limiting, which Petitioner does not take a position on, Petitioner
`contends that Hirayama307 discloses such a medium. Pet. 49–51.
`Limitations 1a and 1b recite “a touch sensitive area in which a
`representation of a function is provided, wherein the representation consists
`of only one option for activating the function.” Ex. 1001, 6:50–52. Petitioner
`contends that this “representation of a function” corresponds to
`Hirayama307’s icon 41 as shown in Hirayama307’s Figures 3A and 3B,
`which represents a single option for activating a phone dialer function. Pet.
`51–58; see supra Section III.C.1.
`Limitation 1c recites “wherein the function is activated by a multi-step
`operation comprising (i) an object touching the touch sensitive area at a
`location where the representation [of a function] is provided and then (ii) the
`object gliding along the touch sensitive area away from the touched
`location.” Id. at 6:54–57. An example of this operation is the gesture
`illustrated in Figure 2 of the ’879 patent, which we discuss above. See supra
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`Section II.B. Petitioner contends that in Hirayama307, this recited gesture
`corresponds to the user touching icon 41 on display portion 1 and moving
`the pen downward, away from the touched location, until the function is
`activated by opening up dialer window 43 (as shown in Hirayama307’s
`Figure 3B). See Pet. 58–60.
`Neonode does not contest Petitioner’s arguments about the preamble
`or limitations 1a or 1b, but contests Petitioner’s arguments as to limitation
`1c. PO Resp. 19–33. However, because we find that Petitioner has failed to
`meet its burden of persuasion as to limitation 1d, particularly in light of our
`determination that the objective indicia of non-obviousness weigh in favor
`of nonobviousness (see infra Section III.C.5), we need not address
`Petitioner’s contentions as to the preamble or limitations 1a–1c in detail, or
`Neonode’s responsive arguments about limitation 1c. We discuss the
`contested issues relating to limitation 1d below.
`
`4.
`
`Limitation 1d
`
`Limitation 1d recites “wherein the representation of the function is not
`relocated or duplicated during the gliding.” Ex. 1001, 6:57–59. Petitioner
`argues, alternatively, (1) that Hirayama307 would have suggested limitation
`1d to a person of ordinary skill in the art, and (2) that Hirayama307 teaches
`the limitation in view of the teachings of Ren. Pet. 60–62. We address each
`of these arguments in turn.
`
`(a) Whether Hirayama307 Teaches Limitation 1d
`
`Limitation 1d is a negative limitation because it requires the absence
`of any “relocat[ion] or duplicat[ion] during the gliding” gesture. Ex. 1001,
`6:57–59. As with any claim limitation, the burden of persuasion rests on
`
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`Petitioner to show that the negative limitation is present in Hirayama307 or
`that this negative limitation would have been an obvious variation based on
`Hirayama307’s disclosure, a burden that never shifts to Neonode. Dynamic
`Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1379–81 (Fed.
`Cir. 2015).
`As discussed above, Petitioner contends that Hirayama307’s icon 41
`is the “representation of the function” recited in claim 1, and that the recited
`gliding gesture occurs when “the user ‘moves (i.e. drags) the point of the pen
`3.’” Pet. 60 (quoting Ex. 1006, 5:3–4) (citing Ex. 1006, 1:52–55); see supra
`Section III.C.3. According to Petitioner, “[i]t would have been obvious,
`given Hirayama307’s disclosure[,] to implement the user interface such that
`the icon is not relocated or duplicated during the gliding of the pen.” Pet. 60
`(citing Ex. 1002 ¶ 157). In support for its arguments, Petitioner relies on the
`testimony of Dr. Bederson and focuses primarily on Figures 3A and 3B, and
`text associated with these figures. See Pet. 60–62; Pet. Reply 10–18, 21–26.
`Below, we address the disputed issues regarding Petitioner’s
`argument. For the reasons below, we find that the evidence is insufficient to
`establish by a preponderance of the evidence that Hirayama307 teaches the
`lack of any relocation or duplication of icon 41 during the pen movement as
`limitation 1d requires.
`
`(1) Hirayama307’s Summary of the Invention
`
`In response to Petitioner’s general arguments in the Petition, Neonode
`argues that Hirayama307’s “Objects and Summary of the Invention” section
`discloses that after a user selects an icon such as icon 41 in Figure 3A, the
`input device 2 has a circuit that “controls the icon display coordinate
`position such that the icon display coordinate position is moved in
`
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`IPR2021-00144
`Patent 8,095,879 B2
`
`accordance with the movement of the position coordinate of the point of the
`pen” and then after some distance “converts the icon into a window.” PO
`Resp. 39–40 (quoting Ex. 1006, 2:5–11) (citing Ex. 2007 ¶ 73). This,
`according to Neonode, suggests that icon 41 is dragged along with the tip of
`pen 3 during the dragging operation that Petitioner relies on as disclosing
`limitation 1d. See id. at 29.
`In its Reply, Petitioner acknowledges that “it would have been at least
`obvious” to implement Hirayama307’s user interface in “a way in which
`icon 41 is dragged during gliding of the pen,” but Hiryama307 also teaches
`implementing the user interface in “a way that does not drag icon 41.” Pet.
`Reply 18 (citing Ex. 1051 ¶ 82). Petitioner also contends that
`Hirayama307’s summary section describes a different embodiment than the
`rest of the disclosure. See id. at 10–12 (citing Ex. 1006, 2:5–13, 4:61–65,
`5:3–12, 5:26–44, 5:63–66, Figs. 3A, 3B, 4A; Ex. 2007 ¶ 59; Ex. 1051 ¶¶ 61–
`64); id. at 17–18 (citing Ex. 1006, 1:64, 7:49–56, Fig. 3A; Ex. 1051 ¶¶ 80–
`81).
`
`In its Sur-reply, Neonode disagrees that the summary section of
`Hirayama307 reflects a different embodiment from the rest of the disclosure,
`as its intent was to provide a summary “of the invention.” PO Sur-reply 24
`(emphasis omitted). Neonode argues that the summary refers to different
`“aspects” of that invention only because it summarizes both icon-opening
`and icon-closing operations. Id.
`We agree with the parties that a person of ordinary skill in the art,
`reading Hirayama307 and in particular its summary section, would have
`understood that icon 41 can move along with the tip of pen 3 during the
`dragging operation. However, the language in the summary section adds
`
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`ambiguity by referring to movement of “the icon display coordinate
`position” rather than simply the “icon.” Ex. 1006, 2:6; see Ex. 1051 ¶ 81
`(implying that there is a distinction between moving an icon and moving the
`icon’s “display coordinate position”).
`So, while the summary passage teaches dragging an icon’s “display
`coordinate position,” this passage does not necessarily teach that the icon is
`visually dragged with the pen. And we acknowledge Petitioner’s point that
`this disclosure would not rule out other embodiments in Hirayama307 (to the
`extent they exist) in which the icon is not moved during the dragging
`gesture. Pet. Reply 17–18. Nevertheless, the passage provides at least some
`evidence that a person of ordinary skill in the art would have understood that
`the icon is visually dragged with the pen in Hirayama307’s disclosure, and
`Dr. Rosenberg’s testimony on this point is entitled to at least some weight in
`our § 103 analysis. Ex. 2007 ¶¶ 72–73.
`
`(2) Figure 4A
`
`In its Reply, Petitioner argues that we can interpret Figure 4A and its
`associated text as disclosing, or at least rendering obvious, that icon 41 is not
`dragged along with pen 3. Pet. Reply 10–15. In particular, Petitioner argues
`that “[d]uring the shifting/gliding of the pen in step S4 [of Figure 4A] there
`is no movement or dragging of icon 41.” Pet. Reply 12 (citing Ex. 1006,
`6:3–6, 6:16–21, Figs. 4A, 3B; Ex. 1051 ¶¶ 63–64). Petitioner relies on Dr.
`Bederson’s testimony that “[n]either the flowchart of FIG. 4A nor the
`corresponding description tell a [person of ordinary skill in the art] to
`relocate, duplicate, or otherwise drag icon 41 during the movement of the
`pen,” yet Figure 4A expressly “teaches when to move/drag the window 43
`. . . , which is not a relocation or duplication of icon 41.” Id. (citing
`
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`Ex. 1006, 6:7–14, Fig. 4A; Ex. 1053, 94:10–95:12). According to Petitioner,
`a person of ordinary skill in the art would have been left “to assume that
`where no such movement is described, none should be implemented.” Id.
`(citing Ex. 1051 ¶ 65).
`Instead, Petitioner argues that in Hirayama307’s Figure 4A, although
`a user moves the pen from its original touch point at icon 41, the icon stays
`at its original location while the interface shows only cursor 42 at the
`location of the pen tip until the pen tip either leaves hatched area 45 or shifts
`some greater distance from that original position, at which time window 43
`will appear at the location of the pen tip. See Pet. Reply 13–15 (citing Ex.
`1006, 5:41–53, 5:61–63, Fig. 4A; Ex. 1051 ¶¶ 66–69).
`We find Petitioner’s argument as to the flowchart in Figure 4A and the
`accompanying textual description unpersuasive. First, Petitioner has not
`pointed to any explicit disclosure of limitation 1d in Hirayama307’s Figure
`4A or elsewhere within Hirayama307. At best, Petitioner shows that in
`Figure 4A there is “[n]o discussion of movement of icon 41.” Pet. Reply 11
`(emphasis omitted); see also id. at 15 (arguing that “nothing about [step S4
`in Figure 4A] instructs a [person of ordinary skill in the art] that icon 41 is
`dragged during movement of the pen”).
`And we find that Petitioner has not shown, by a preponderance of the
`evidence, that the absence in Figure 4A of any step of moving icon 41 would
`have suggested to a person of ordinary skill in the art that no such movement
`or duplication of icon 41 occurs. We acknowledge Dr. Bederson’s point that
`Figure 4A omits any explicit reference to moving icon 41 prior to its
`enlargement to icon/window 43, while at the same time explicitly
`mentioning the movement of enlarged icon/window 43. See Ex. 1051 ¶ 65.
`
`
`
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`23
`
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