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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.,
`
`Petitioners
`
`v.
`
`NEONODE SMARTPHONE LLC,
`
`Patent Owner
`
`____________
`
`Case IPR2021-00145
`U.S. Patent No. 8,812,993
`
`
`
`
`PATENT OWNER’S SUR-REPLY
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`005079-19/1724493 V5
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`
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`TABLE OF CONTENTS
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`IPR2021-00145
`Patent Owner’s Sur-Reply
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`Page
`
`
`I.
`
`II.
`
`B.
`
`THE CHALLENGED CLAIMS ARE NOT UNPATENTABLE .................. 1
`A.
`Claim 1 – Ground 1A ........................................................................... 1
`1.
`Hisatomi/Ren Does Not Disclose a Tap-Present
`State ............................................................................................ 1
`i.
`“Tap-Activatable” ............................................................ 1
`ii.
`Hisatomi Does Not Disclose a Tap-Present
`State .................................................................................. 4
`iii. A POSA Would Have Had No Motivation to
`Import Ren’s Direct Off Strategy into
`Hisatomi ........................................................................... 5
`Hisatomi Does Not Disclose Tap-Activatable
`Icons for System Functions ........................................................ 9
`i.
`“System Functions” .......................................................... 9
`ii.
`Hisatomi Does Not Disclose Tap-
`Activatable Icons for System Functions ........................ 11
`Claim 1 – Ground 2A ......................................................................... 17
`1.
`Hansen Does Not Disclose the Recited Electronic
`Device ....................................................................................... 17
`Hansen Does Not Disclose Icons for System
`Functions .................................................................................. 18
`No Motivation to Combine Hansen and Gillespie ................... 19
`3.
`Claim 3 ................................................................................................ 21
`C.
`Claims 5-6 ........................................................................................... 22
`D.
`SECONDARY CONSIDERATIONS .......................................................... 23
`A. Neonode is Entitled to a Presumption of Nexus ................................. 23
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`2.
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`2.
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`Commercial Success ........................................................................... 24
`B.
`Industry Praise .................................................................................... 25
`C.
`Initial Skepticism ................................................................................ 26
`D.
`The Samsung License ......................................................................... 26
`E.
`III. CONCLUSION ............................................................................................. 27
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`TABLE OF AUTHORITIES
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`
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`CASES
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`IPR2021-00145
`Patent Owner’s Sur-Reply
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`Page(s)
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`Al-Site Corp. v. VSI Int'l, Inc.,
`174 F.3d 1308 (Fed. Cir. 1999) .......................................................................... 25
`Fox Factory, Inc. v. SRAM, LLC,
`944 F.3d 1366 (Fed. Cir. 2019) .......................................................................... 24
`Henny Penny Corp. v. Frymaster LLC,
`938 F.3d 1324 (Fed. Cir. 2019) .......................................................................... 25
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .................................................................. 4, 6, 18
`M&K Holdings, Inc. v. Samsung Elecs. Co., Ltd.,
`985 F.3d 1376 (Fed. Cir. 2021) .......................................................................... 17
`MasterMine Software, Inc. v. Microsoft Corp.,
`874 F.3d 1307 (Fed. Cir. 2017) ............................................................................ 9
`Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
`75 F.3d 1568 (Fed. Cir. 1996) ............................................................................ 25
`Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc.,
`853 F.3d 1272 (Fed. Cir. 2017) ...................................................................... 9, 17
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`IPR2021-00145
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`TABLE OF EXHIBITS
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`Description
`
`Declaration of Craig Rosenberg, Ph.D. in Support of Patent Owner’s
`Preliminary Response
`
`NEO
`Exhibit
`Number
`2001
`
`2002
`
`Craig Rosenberg, Ph.D., Curriculum Vitae
`
`2003 MicroTouch Mac-‘n-Touch Technical Data Sheet
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`US Patent No. 5,406,307 (Hirayama, et al.)
`
`Transcript of 30(b)(6) Videotaped Deposition of Neonode, Inc. by
`Joseph Shain and Thomas Eriksson (March 19, 2012) in the matter of
`Motorola Mobility, Inc. v. Apple Inc., CA No. 1:10cv023580, United
`States District Court for the Southern District of Florida.
`
`Transcript of Telephonic conference Before the Honorable Alan D.
`Albright (October 23, 2020), in the matter of Neonode Smartphone,
`LLC v. Apple, Inc., Docket No. WA 20-CA-505, Neonode
`Smartphone, LLC v. Apple, Inc., Docket No. WA 20-CA-507, United
`States District Court for the Western District of Texas, Waco Division
`
`Plaintiff Neonode Smartphone LLC’s Motion for Issuance of Letter of
`Request to Examine Persons, Inspect Documents, Inspect Property
`Pursuant to the Hague Convention on the Taking of Evidence Abroad
`in Civil or Commercial Matters, and Exhibit A thereto.
`
`Apple Inc.’s Unopposed Motion for Issuance of Letter of Request to
`Examine Persons and Inspect Documents Pursuant to Hague
`Convention, and Exhibit A thereto.
`
`Order Granting Plaintiff Neonode Smartphone LLC’s Motion for
`Issuance of Letter of Request to Examine Persons, Inspect
`Documents, Inspect Property Pursuant to the Hague Convention on
`the Taking of Evidence Abroad in Civil or Commercial Matters
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`NEO
`Exhibit
`Number
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
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`IPR2021-00145
`Patent Owner’s Sur-Reply
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`Description
`
`Declaration of Jakob Falkman in Support of Patent Owner’s
`Preliminary Response
`
`Declaration of Philip Graves in Support of Patent Owner’s
`Preliminary Response
`
`Neonode N1 Quick Start Guide, V 0.5
`
`Declaration of Craig Rosenberg, Ph.D. in Support of Patent Owner’s
`Response to Petition
`
`Neonode Confidential Business Plan, May 2003
`
`Declaration of Per Bystedt in Support of Patent Owner’s Response to
`Petition
`
`Declaration of Marcus Bäcklund in Support of Patent Owner’s
`Response to Petition
`
`US Patent No. 7,880,732
`
`Transcript of Deposition of Benjamin B. Bederson, Ph.D. dated
`August 18, 2021
`
`Declaration of Joseph Shain in Support of Patent Owner’s Response
`to Petition
`
`Neonode Development of Neonode N1 Terminal Accomplished and
`Remaining Development Phases
`
`“Neonode is Alive Again” certified translation from Swedish to
`English (https://www.mobil.se/business/neonode-lever-igen last
`accessed September 17, 2021)
`
`2022
`
`Declaration of Ulf Mårtensson in Support of Patent Owner’s
`Response to Petition
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`NEO
`Exhibit
`Number
`2023
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`2024
`
`2025
`
`2026
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`2027
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`IPR2021-00145
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`Description
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`Neonode History
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`Neonode Confidential Investment Memorandum, January 2004
`
`Research & Development and License Agreement between Neonode
`and Samsung Electronics Co., Ltd., effective July 13, 2005
`
`Excel Spreadsheet documenting Neonode sales
`
`“Pen Computing Magazine: The NeoNode N1”
`(https://pencomputing.com/WinCE/neonode-n1-review.html last
`accessed September 21, 2021)
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`2028
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`I.
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`THE CHALLENGED CLAIMS ARE NOT UNPATENTABLE
`A. Claim 1 – Ground 1A
`1. Hisatomi/Ren Does Not Disclose a Tap-Present State
`
`i.
`
`“Tap-Activatable”
`
`Petitioners object to Neonode’s construction of “tap” as requiring that the
`
`liftoff be direct and immediate, but propose no competing construction. They
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`object to a lack of evidence of the “ordinary meaning” of tap, but none is needed,
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`as Figure 4 makes it clear that a tap is a downward touch and then upward
`
`movement from the same location on the display. EX1001, 4:41-42, Fig. 4. This
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`is the only intrinsic evidence as to the meaning of this term, and it compels
`
`adoption of Neonode’s construction.
`
`Petitioners now argue that a “tap” includes Ren’s abca Direct Off
`
`variant, so the liftoff cannot be direct and immediate. However, they did not make
`
`this argument in the Petition, pointing instead only to the aca version of Direct
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`Off:
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`Paper #1, p. 37. Similarly, while Bederson now states in his supplemental
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`declaration that he disagrees with Neonode’s construction, his initial declaration,
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`like the Petition, relied solely on the aca version of Direct Off:
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`EX1002, ¶135. Consistent with his reliance on aca to satisfy the “tap”
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`element, Bederson included an illustrated version of Figure 4 explicitly indicating
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`that for a tapping gesture as used in the ‘993 Patent the user lifts his finger from the
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`display directly from the location at which he had touched it:
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`EX1002, ¶40. Finally, in Bederson’s deposition, he testified that “tap” as he used
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`the term in his report “meant pressing the screen and releasing it in the same or
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`almost the same position.” EX2018, 60:5 to 61:14.
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`In light of this evidence, Petitioners’ (and Bederson’s) newly-articulated
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`view that Ren’s abca version of Direct Off constitutes a “tap” is, simply,
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`not credible. Nor is it admissible, as they could have asserted it in the Petition but
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`did not. Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
`
`1369-70 (Fed. Cir. 2016); PTAB Consolidated Patent Trial Practice Guide, at 73
`
`(Nov. 21, 2019).
`
`Petitioners point to (mistaken) deposition testimony from Dr. Rosenberg
`
`equating abca to “tap.” This testimony is not dispositive; it is the intrinsic
`
`evidence that controls, and it forecloses equating abca to “tap.” In any
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`event, Dr. Rosenberg’s declaration testimony implicitly excluding the abca
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`version of Direct Off from the scope of “tap,” EX2013, ¶¶44-48, should be
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`weighed in the balance as well; in combination with the intrinsic evidence and
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`evidence from Petitioners and their expert supporting Neonode’s construction of
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`“tap-activatable,” the evidence compels adoption of Neonode’s construction.
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`ii.
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`Hisatomi Does Not Disclose a Tap-Present State
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`Petitioners make only a cursory effort to bolster their assertion that Hisatomi
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`discloses tap-activatable icons in the tap-present state. Petitioners principally
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`complain that Figure 13 lacks a box for “NO” branching off of step S210, and
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`assert that if the GUI function button activates upon touch there would have been
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`no need for an OFF event. This ignores that the OFF event may simply reflect the
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`user lifting the stylus off the display after button activation to initiate a new input.
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`Figure 13 shows touch activation, because step S211 (“Go to function processing”)
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`is executed directly upon determination that the stylus is within a GUI function
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`button and, necessarily, prior to being lifted off the display. EX1005, ¶55, Fig. 13.
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`No further act following detection of the stylus within the GUI function button
`
`coordinates (such as a lift-off) is necessary to activate the function. This indicates
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`that the GUI buttons are activated by touch, not tap.
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`iii.
`
`A POSA Would Have Had No Motivation to Import
`
`Ren’s Direct Off Strategy into Hisatomi
`
`In response to Neonode’s POR, Petitioners advance two principle
`
`arguments. First, Petitioners contend that Ren’s tiny icon sizes do not render it
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`irrelevant, because testing with larger icons would not have yielded useful results.
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`This is a non sequitur—the issue is whether Ren’s results would have been
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`considered useful by a POSA considering the display of Hisatomi, which is the
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`size of a notebook computer and does not appear to contemplate using icons 1mm
`
`or 2mm across—indeed, Hisatomi’s Figure 7 depicts the icons as being roughly
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`twice the width of the stylus, which itself would have been significantly wider than
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`3mm. EX1005, Fig. 7. Petitioners’ effort to recast Hisatomi as a “PDA-sized”
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`system fails, because Hisatomi states that the device is “notebook-sized.” EX1005,
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`¶12. And while Petitioners and Bederson contend that “Pocket PC” products
`
`existed with smaller icons, this is irrelevant, because they don’t include those
`
`products in their proposed combination; it is the alleged motivation to incorporate
`
`Ren’s Direct Off strategy into Hisatomi, not Jornada, that is relevant.
`
`At the 3mm icon size that is most relevant to the Hisatomi display, Ren
`
`shows a detriment to both speed and accuracy with Direct Off. While Petitioners
`
`state that the values for the different strategies in Figure 10 are not accurately
`
`readable, the difference between Direct Off and Direct On is clearly discernable,
`
`and it favors Direct On (touch). EX1006, p. 408. In addition, while Petitioners
`
`assert that the differences between Direct On and Direct Off at the larger target
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`sizes are not statistically significant, this is false as to speed—Ren states that “the
`
`difference between the strategies in selection time remains when the target size is
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`varied.” EX1006, p. 407. Indeed, p was <0.01 at 9 pixels (3mm), id., and Ren
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`states that “the Direct On strategy was faster than the Direct Off strategy
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`(p<0.05),” id., at 408-409, and that “[t]he difference in selection time between the
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`strategies remained significant for each target size of 1, 3, 5, 7, and 9 pixels.” Id.,
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`at 411.
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`Petitioners also contend that the mean error rates for Ren’s second
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`experiment show lower error rates for Direct Off versus Direct On. However, the
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`statistic Petitioners cite is across all target sizes; since Petitioners seek to combine
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`Ren with Hisatomi, target sizes of 1 or 2mm are irrelevant. As shown in
`
`Neonode’s POR, for the 3mm targets the difference favors Direct On (touch).
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`EX1006, p. 408 (Fig. 10).
`
`Petitioners next contend that a POSA would have been motivated to change
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`Hisatomi’s touch-activatable icons to tap-activatable icons. However, they fail to
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`articulate a credible motivation. They claim that “tap gestures were the most
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`intuitive gestures for selecting and activating graphic user interface elements,” but
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`this does them no good because touch activation is necessarily just as intuitive as
`
`tap activation (the user performs the same initial movement (touching the display)
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`in both cases) and, as shown by Ren, provides faster activation and, at Ren’s 3mm
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`target size, better accuracy.
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`Their primary asserted motivation is to differentiate the icon activation
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`mechanism from a touch and glide gesture. However, Hisatomi’s pull-out menu
`
`icons are not activated or movable by a touch and glide gesture, EX2013, ¶97, so
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`this purported benefit is spurious. In any event, Petitioners’ premise is incorrect
`
`because the trigger area graphics activate upon touch, not drag or liftoff. EX1005,
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`¶¶45-47, 50-52, Fig. 10 (S106, 113 (e.g., “Standby for receiving the X coordinate
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`information . . .”)), Fig. 13 (S206, 213). And Dr. Rosenberg’s general observation
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`that tap may be used to differentiate from a touch and glide operation does
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`Petitioners no good, for the same reason: there is no reason to differentiate the
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`activation method of Hisatomi’s pull out menu icons from a touch and glide.
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`Petitioners also assert that a POSA would have been motivated to
`
`incorporate Direct Off into Hisatomi because it allows error correction. This is a
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`new argument, and should be disregarded. In any event, it is incorrect, as “tap-
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`activatable,” properly construed, does not enable error correction as proposed by
`
`Petitioners because it does not permit Hisatomi’s stylus to slide around on the
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`display prior to being lifted off. Moreover, even if “tap” encompassed Ren’s “slide
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`around” abca Direct Off variant (which it does not), there is no evidence
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`that a POSA would have been motivated to incorporate it into Hisatomi (as
`
`opposed to just “considering” it in light of a variety of other tradeoffs) for icons of
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`the size at issue in Hisatomi. Bederson never tries to link his “error correction”
`
`argument to icons of the relevant size, and in fact the decreasing advantage of
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`Direct Off for mean error rates as a function of increasing icon size—with a
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`crossover to a disadvantage for icons of 3mm, still much smaller than Hisatomi’s
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`icons—constitutes evidence contravening Bederson’s thesis. Bederson admits this
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`correlation between increasing icon size and decreasing error rate. EX1051, ¶42.
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`This is fatal to his purported “error correction” motivation.
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`2. Hisatomi Does Not Disclose Tap-Activatable Icons for
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`System Functions
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`i.
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`“System Functions”
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`Petitioners attack Neonode’s construction of “system function,” positing
`
`instead that a system function may be any function or application that “relate[s] to”
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`the system of the device. This reads “system” out of the claim as a limiting
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`element, since any function will relate to the system of the device on which it is
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`running. It is therefore incorrect. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc.,
`
`853 F.3d 1272, 1288 n.10 (Fed. Cir. 2017). It is also foreclosed by the prosecution
`
`file, in which the applicant distinguished several references on the ground that they
`
`did not disclose a home state presenting controls for a plurality of system
`
`functions. EX1003, at 411-415; MasterMine Software, Inc. v. Microsoft Corp.,
`
`874 F.3d 1307 (Fed. Cir. 2017). The functions identified as not comprising system
`
`functions included keypad and keyboard entry, the particular options within a help
`
`function, calculator function entry and a function for toggling between a running
`
`application and a list of recently-run applications. EX1003, at 414-15. Thus, a
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`system function is not just any function that relates to a system; it is a specific type
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`of function, and the specification ties this term to “services or settings of the
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`operat[ing] system” of the device. EX1001, 4:38-39.
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`Petitioners assert “ordinary meaning,” but they only provide a definition of
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`“function” that fails to account for the limiting adjective “system,” and proffer no
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`evidence that “system function” is a term of art. So, the specification provides the
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`basis for decision. And the specification describes the embodiment of claim 1, at
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`4:36-40.1 Petitioners disagree, but their response is ineffective. Bederson says he
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`disagrees that a POSA would read the text at 4:36-40 as describing the claimed
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`embodiment, but he does not explain why. EX1051, ¶35. He then asserts that the
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`specification teaches a single user interface, but this is only true in the trivial sense
`
`that it refers to multiple embodiments of the interface as a single interface. He
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`then asserts that the specification discloses a scenario in which multiple
`
`applications are running, EX1051, ¶36, but this does not overcome the clear
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`description of two different user interface embodiments at 4:20-40, one in which
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`there is an active application and the other (the claimed embodiment) in which
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`there is not.
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`Petitioners also assert that the prosecution file contradicts Neonode’s
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`position regarding icons for system functions. However, the proposed claims to
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`which they point depended from an independent claim that was directed to a
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`display presenting a plurality of icons, “each icon representing an application, . . .
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`1 Neonode notes that the text at 10:4-6 of its POR was intended to be appended to
`the conclusion of the following paragraph.
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`.” EX1003, at 566. This claim was subsequently amended nearly in its entirety,
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`deleting the “application” language and adding text directed to “controls for a
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`plurality of pre-designated system functions, . . . .” EX1003, at 403-04. At that
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`time, the dependent claims to which Petitioners point were cancelled. EX1003, at
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`404. So, the claims to which Petitioners point are not at issue in this proceeding.
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`And while the applicant did point to the text at 4:36-40 to support these cancelled
`
`claims, this is immaterial because the text of these cancelled claims (“each icon
`
`representing an application”) is not analogous to the claims at issue here.
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`ii.
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`Hisatomi Does Not Disclose Tap-Activatable Icons for
`
`System Functions
`
`Hisatomi does not disclose “tap-activatable icons for a respective plurality of
`
`pre-designated system functions.” As Neonode showed in its POR, Hisatomi
`
`discloses icons activatable within a camera application, which are not icons for
`
`system functions. Hisatomi’s reference to search and save menus within this
`
`camera application fails to satisfy this deficit, as these are not “icons for” system
`
`functions but rather icons for application functions that may make a call to an
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`operating system function. They are akin to the “save” and “delete” functions
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`within a camera application identified in the ‘993 Patent specification as examples
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`of icons displayed in the interface of the unclaimed embodiment. EX1001, 4:31-
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`35.
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`Petitioners confuse the issue by focusing on whether a function is a system
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`function, rather than on whether an icon is an icon for a system function. They
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`assert that the specification does not teach that an icon presented within an
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`application is not an icon for a system function, but that is exactly what the
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`specification teaches—if an application is currently active, the device will display
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`icons representing services or settings for that application, such as icons for “save”
`
`or “delete” conversely, if an application is not currently active, the device will
`
`present icons representing “services or settings of the operations system” of the
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`device. EX1001, 4:20-40. While it is true that one or more in-application
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`functions may be “related” to the operating system in the sense that they make
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`calls to the operating system, this is irrelevant – the claim requires “icons for”
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`system functions, not icons for functions related to system functions.
`
`That is why Hisatomi’s “A classification menu” does not disclose icons for a
`
`plurality of system functions. As best can be determined, Hisatomi’s “A
`
`classification menu” provides a search function presenting a montage of “images
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`that have been taken and saved in the past . . . .” EX1005, ¶22. This is further
`
`highlighted by the illustration of the images provided for the A menu, which are
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`larger than the smaller icons of the B and D menus and are akin to the size of a
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`large thumbnail image. EX1005, ¶66, Fig. 17. These are not icons for a plurality
`
`of system functions, such as the icons for system functions illustrated in Figure 3
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`of the ‘993 Patent, each of which may be activated to present a different system
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`function to the user. They are just images, and collectively relate to a single
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`function at best. Bederson asserts that a POSA would recognize these menus as
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`including icons for services or settings of the operating system, but provides no
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`explanation as to why this would be so.
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`Petitioners also claim that Dr. Rosenberg agreed that a search function in a
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`2002 Windows CE interface is a system function. Not so—what Dr. Rosenberg
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`said was that if one were to “pull up a search functionality from the home screen”
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`of a device running Windows CE, then the search functionality would be a system
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`function. EX1052, 59:18 – 60:5. The critical limitation is the one included in the
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`question—the search functionality from the home screen, not the search
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`functionality from an application.
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`Petitioners also point to a “detailed settings menu” in Figure 30 as disclosing
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`icons for system functions. However, Hisatomi is largely opaque as to what these
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`settings include, describing them (in a section concerning a different embodiment)
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`as “functions that are rarely used such as special settings, etc. (for example,
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`detailed settings, user settings, etc.). . . .” EX1005, ¶114. There is no indication
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`that the icons for these settings are icons for system functions—to the contrary, the
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`suggestion that they are for “user settings” and “detailed settings” suggests that
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`they are merely settings for Hisatomi’s camera application.
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`Petitioners next assert that Hisatomi’s interface is not limited to a camera
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`IPR2021-00145
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`application, and that the problem Hisatomi tries to solve is not tied to a camera
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`application. This is incorrect. In fact, all of the described embodiments of
`
`Hisatomi are described as embodiments of a digital camera. This could not be
`
`more clear. EX1005, ¶¶12-15; Figs. 1-3. The device has a “camera part” and a
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`physical shutter button; of course it is a camera. Moreover, the “problems to be
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`solved by the invention” of Hisatomi are directly tied to those of a camera
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`application. As described by Hisatomi, the problem was that “[w]hen such pull-
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`down menus or pull-up menus are applied to a conventional portable information
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`terminal with a narrow display screen, the menu will cover the main image that
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`should be displayed.” EX1005, ¶4. This is not a problem for a display screen of a
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`conventional computer; when in a “tap-absent state” as recited in claim 1, a
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`computer user would not care about obscuring the home screen of the computer by
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`pulling out a menu, which is not presenting a work space in that state. However, it
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`is a problem for the user of Hisatomi’s device, the purpose of which is to provide a
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`function list display means “that does not hinder any [image] editing work even if
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`a menu and a main image are simultaneously displayed at a small image display
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`part.” EX1005, ¶6. Hisatomi describes a device running a camera application,
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`with functions for taking, saving and editing an image.
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`Petitioners point to Hisatomi’s description of its device as a “portable
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`information terminal (PDA)” to bolster their contention that Hisatomi describes a
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`conventional computer. However, this language merely describes the general type
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`of device; the more specific description that immediately follows, EX1005, ¶¶13-
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`14, Figs. 1, 5-6, narrows the focus to that of a camera, not a conventional
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`computer.
`
`Petitioners also point to a single paragraph following the description of the
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`nine embodiments of Hisatomi (all of which are based on Hisatomi’s camera
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`device) to the effect that the invention “can also be applied to” a “still camera, a
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`video camera, a notebook computer, a head mounted display, a car navigation
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`system, or the like.” EX1005, ¶243. While Hisatomi does state that the invention
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`could be applied to a notebook computer, it says nothing about the icons that
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`would be displayed in the various classification menus in such an embodiment. It
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`therefore does not disclose a tap-present state including icons for a plurality of
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`system functions as applied to a notebook computer. In addition, presumably, if
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`the invention is being applied to solve the same problem as stated, it would be
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`where there is an image on the home screen of the notebook computer that needs to
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`be edited or otherwise not obscured; Petitioners have provided no evidence
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`suggesting that that is a problem in the notebook space, or in the handheld
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`computer space, so they present no evidence suggesting that a POSA would even
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`attempt to implement Hisatomi’s interface on a notebook computer.
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`Finally, Petitioners assert that Hisatomi’s camera functionality is not an
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`application. Yet their argument shows that it is. They admit that the first step
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`when the power is turned on is to regenerate and display previously-taken images,
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`and that no user interaction is required to launch an application. That is the
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`point—Hisatomi’s camera application launches upon power-on, as described in
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`Figure 9. EX1005, ¶¶34-35, Fig. 9. They then characterize Hisatomi’s
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`“functionality” as a “camera ‘system’” having icons for applications, services or
`
`settings of that system, but that admits the key fact—Hisatomi’s classification
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`menus present icons (or, as with the A menu, images) not for system functions, but
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`for (camera) application functions. Simply calling a camera application a “system”
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`does not suffice. And Bederson’s assertion that a POSA would not consider
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`Hisatomi’s start-up functionality to be an “active application” is immaterial.
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`Bederson suggests that if there is only one application then the application is the
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`system, but this is a red herring. However, the icons for system functions are icons
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`for services or settings of the operating system, not of an application. Bederson’s
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`attempt to characterize Hisatomi’s functions as system functions rejects this
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`premise, and is therefore meritless.
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`B. Claim 1 – Ground 2A
`1. Hansen Does Not Disclose the Recited Electronic Device
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`IPR2021-00145
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`The Board should construe “electronic device” as proposed in Neonode’s
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`POR. However, even if it does not, Hansen’s desktop system does not satisfy the
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`preamble of claim 1 for the reason articulated in Neonode’s POR: “an electronic
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`device” as used in the preamble means a single device, and here that single device
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`must include a processor and a touch-sensitive display. Petitioners proffer no
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`contrary authority, instead asserting that Figure 1’s “block diagram of a computer
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`system,” EX1029, 3:34-35, is unlimited as to form factor and so encompasses a
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`singular device including a processor and touch-sensitive display. This fails as a
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`matter of law. Wasica, 853 F.3d at 1284. Petitioners cannot simply point to a
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`block diagram of components and speculate that it discloses a specific form factor;
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`they must prove that Hansen actually discloses the alleged form factor. They do
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`not even try to do so.
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`Their fallback position is that a POSA “would have understood—or at least
`
`found obvious—that its teachings extend to any computers running a Windows-
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`based system.” This is deficient for multiple reasons. First, Petitioners’ ground for
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`unpatentability as stated in the Petition was that Hansen “discloses” the preamble,
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`not renders it obvious. Accordingly, Petitioners cannot now fall back on an
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`obviousness rationale; they must prove what they asserted in the Petition. M&K
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`Holdings, Inc. v. Samsung Elecs. Co., Ltd., 985 F.3d 1376, 1384-86 (Fed. Cir.
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`IPR2021-00145
`Patent Owner’s Sur-Reply
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`2021); Intelligent Bio-Sys., 821 F.3d at 1369-70. Second, Bederson fails to explain
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`why a POSA would have considered “clutter” to be a problem with respect to the
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`IBM Thinkpad 730TE or any other “device.” Petitioners therefore fail to
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`adequately support their late-disclosed obviousness theory.
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`2. Hansen Does Not Disclose Icons for System Functions
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`Neonode showed in its POR t
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