`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., AND APPLE INC.
`Petitioner,
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2021-00145
`Patent 8,812,993
`
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER’S BRIEFING REGARDING IMPACT
`OF LITIGATION STAY ON FINTIV ANALYSIS
`
`
`
`
`
`Attorney Docket No. 50095-0016IP1
`IPR of U.S. Patent No. 8,812,993
`
`EXHIBITS
`
`Exhibit No.
`1001
`
`Description
`U.S. Patent No. 8,812,993 (“the ’993 patent”)
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`Declaration of Benjamin B. Bederson
`
`File History for U.S. Patent No. 8,812,993
`
`Benjamin B. Bederson CV
`
`Certified translation of JP Published Patent Application No.
`2002-55750 (“Hisatomi”), published February 20, 2002
`
`Xiangshi Ren & Shinji Moriyama, “Improving Selection on Pen-
`Based Systems: A Study of Pen-Based Interaction for Selection
`Tasks,” ACM Transactions on Computer-Human Interaction,
`Vol. 7, No. 3, September 2000, pp. 384-416 (“Ren”)
`
`U.S. Patent No. 5,422,656 to Allard et al. (“Allard-656”)
`
`U.S. Patent No. 5,249,296 to Tanaka (“Tanaka”)
`
`U.S. Patent No. 5,615,384 to Allard et al. (“Allard-384”)
`
`U.S. Patent No. 5,537,608 to Beatty et al. (“Beatty”)
`
`U.S. Patent No. 5,903,268 to Hirayama (“Hirayama”)
`
`U.S. Patent No. 5,305,435 to Bronson (“Bronson”)
`
`U.S. Patent No. 6,133,898 to Ludolph et al. (“Ludolph”)
`
`Tammara T. A. Combs and Benjamin B. Bederson “Does
`zooming improve image browsing?” Proceedings of the Fourth
`ACM Conference on Digital Libraries (DL ’99), ACM, New
`York, NY, USA, (August 1999) 130-137
`
`1015
`
`Dean Harris Rubine, “The Automatic Recognition of Gestures,”
`CMU-CS-91-202, December, 1991.
`
`1016
`
`U.S. Patent No. 6,710,791 to Kodama et al. (“Kodama”)
`
`i
`
`
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`Attorney Docket No. 50095-0016IP1
`IPR of U.S. Patent No. 8,812,993
`IBM Corp., User’s Manual, “Simon Says ‘Here’s How!’” Part.
`No. 82G2557 (1994) (“IBM”)
`
`Benjamin B. Bederson & James D. Hollan, Pad++: A Zooming
`Graphical Interface for Exploring Alternate Interface Physics,
`UIST ’94 Proceedings of the 7th Annual ACM Symposium on
`User Interface Software and Technology 17 (1994), DOI:
`http://dx.doi.org/10.1145/192426.192435
`
`David Rogers et al., Tossing Objects in a Desktop Environment,
`submitted to Conference on Human Factors in Computing
`Systems (1996)
`
`David Rogers et al., Exemplar Figure of Tossing from Tossing
`Objects in a Desktop Environment, submitted to Conference on
`Human Factors in Computing Systems (1996)
`
`Benjamin B. Bederson, Fisheye Menus, UIST ’00 Proceedings of
`ACM Conference on User Interface Software and Technology
`217 (2000), DOI: 10.1145/354401.317382
`
`Leslie E Chipman et al., SlideBar: Analysis of a Linear Input
`Device, 23 Behaviour & Info. Tech. 1 (2004), DOI:
`10.1080/01449290310001638487
`
`Hilary Browne et al., Designing a Collaborative Finger Painting
`Application for Children, HCIL-2000-17, CS-TR-4184,
`UMIACS-TR-2000-66 (Sept. 2000), available at
`https://hcil.umd.edu/pub-perm-link/?id=2000-17
`
`Pekka Parhi, Amy K. Karlson, and Benjamin B. Bederson. 2006.
`Target size study for one-handed thumb use on small touchscreen
`devices. In Proceedings of the 8th Conference on Human-
`Computer Interaction with Mobile Devices and Services
`(MobileHCI ’06). Association for Computing Machinery, New
`York, NY, USA, 203–210.
`DOI:https://doi.org/10.1145/1152215.1152260
`
`1025
`
`Karlson, Amy & Bederson, Benjamin & Contreras-Vidal, José.
`(2008). Understanding One-Handed Use of Mobile Devices.
`Handbook of Research on User Interface Design and Evaluation
`
`ii
`
`
`
`Attorney Docket No. 50095-0016IP1
`IPR of U.S. Patent No. 8,812,993
`for Mobile Technology. 86-101. DOI:10.4018/978-1-59904-871-
`0.ch006
`
`Apple Newton Message Pad Handbook (1993)
`
`Handbook for Palm m500 Series Handhelds (1998)
`
`HP Jornada 520 Series Pocket PC User Guide (2001)
`
`821,930 to Hansen (“Hansen”)
`
`U.S. Patent Application Publication No. 2005/0024341
`(“Gillespie”)
`
`Declaration of Mr. Jacob Munford
`
`Norman, D. A. (1988). The psychology of everyday things.
`BasicBooks. IBSN: 0-465-06709-3.
`
`U.S. Publication No. 2001/0043189 to Brisebois (“Brisebois”)
`
`Trial Delay Statistics
`
`Order Governing Proceedings - Patent Case, Neonode
`Smartphone LLC v. Apple Inc., 6:20-cv-00505 (W.D.Tex. Oct. 5,
`2020)
`
`Order Governing Proceedings - Patent Case, Neonode
`Smartphone LLC v. Samsung Electronics Co. Ltd. and Samsung
`Electronics America, Inc., 6:20-cv-00507 (W.D.Tex. Oct. 5,
`2020)
`
`Order Granting Motion Continue Case Management Conference
`(CMC), Neonode Smartphone LLC v. Apple Inc., 6:20-cv-00505
`(W.D.Tex.) (W.D.Tex. [[DATE]])
`
`Order Granting Motion Continue Case Management Conference
`(CMC), Neonode Smartphone LLC v. Samsung Electronics Co.
`Ltd. and Samsung Electronics America, Inc., 6:20-cv-00507
`(W.D.Tex. Oct. 7, 2020)
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`iii
`
`
`
`1039
`
`1040
`
`
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`1046
`
`Attorney Docket No. 50095-0016IP1
`IPR of U.S. Patent No. 8,812,993
`Order Setting Markman Hearing, Neonode Smartphone LLC v.
`Apple Inc., 6:20-cv-00505 (W.D. Tex. Oct. 26, 2020)
`
`Order Setting Markman Hearing, Neonode Smartphone LLC v.
`Samsung Electronics Co. Ltd. and Samsung Electronics America,
`Inc., 6:20-cv-00507 (W.D. Tex. Oct. 26, 2020)
`
`November 5, 2020 Letter from Apple Counsel to Neonode
`Counsel
`
`November 5, 2020 Letter from Samsung Counsel to Neonode
`Counsel
`
`“Order Staying Case Pending Completion of Venue Discovery”
`filed 12/08/20 in Neonode Smartphone LLC v. Apple Inc., 6:20-
`cv-00505 (W.D. Tex.)
`
`“Text Order GRANTING [36] Motion to Stay Case” filed
`12/11/20 in Neonode Smartphone LLC v. Samsung Electronics
`Co. Ltd. and Samsung Electronics America, Inc., 6:20-cv-00507
`(W.D. Tex.)
`
`“Plaintiff Neonode Smartphone LLC’s Unopposed Motion to
`Extend Venue Discovery Deadlines” filed 02/16/21 in Neonode
`Smartphone LLC v. Apple Inc., 6:20-cv-00505 (W.D. Tex.)
`
`“Amended Agreed Scheduling Order” filed 11/13/20 in Neonode
`Smartphone LLC v. Apple Inc., 6:20-cv-00505 (W.D. Tex.)
`
`iv
`
`
`
`Attorney Docket No. 50095-0016IP1
`IPR of U.S. Patent No. 8,812,993
`
`I.
`
`INTRODUCTION
`Samsung and Apple (collectively “Petitioner”) filed their petition in IPR2021-
`
`00145 on November 6, 2020. Subsequently, Patent Owner agreed with each of
`
`Apple and Samsung to stay the co-pending litigations. In particular, on December
`
`8, 2020, the district court overseeing the litigation in which the ’993 patent was
`
`asserted against Apple (Case No. 6:20-cv-00505 (W.D.Tex.)) stayed the case and
`
`vacated “all other deadlines provided in the Amended Agreed Scheduling Order
`
`[Dkt. #35] . . . pending resolution of [Apple’s] Motion to Transfer.” EX-1043. On
`
`December 11, 2020, the trial court stayed the co-pending litigation in which the ’993
`
`patent was asserted against Samsung (Case No. 6:20-cv-00507 (W.D.Tex.)) for the
`
`same reason. EX-1044. Recently, Apple and Patent Owner again agreed to extend
`
`the schedule in the co-pending litigation. On February 16, 2021, Neonode filed an
`
`unopposed motion to extend discovery related to the transfer motion a further four
`
`weeks, which was granted on March 5, 2021 and extends the stay by the same four
`
`weeks. EX-1045. Thus, briefing related to the transfer motion will complete no
`
`sooner than April 16, 2021, and the stay will remain in place thereafter until the court
`
`resolves the motion.
`
`The court’s stay of these proceedings and suspension of the original trial
`
`schedule significantly impacts application of the Board’s precedential Fintiv
`
`analysis to the facts of this case. See Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`
`1
`
`
`
`Attorney Docket No. 50095-0016IP1
`IPR of U.S. Patent No. 8,812,993
`Paper 11 at 5-6 (PTAB Mar. 20, 2020) (“Fintiv”). As set forth below, the stay causes
`
`each of Factors 1-3 to weigh even more strongly in favor of the Board not exercising
`
`its discretion to deny institution under § 314(a).
`
`II.
`
`FACTOR 2: THE CURRENT STAYS VACATE THE PRIOR CASE
`SCHEDULES, UNDERSCORING THE UNCERTAINTY OF THE
`TRIAL DATE
`A final written decision (FWD) is expected in this case by approximately June
`
`17, 2022. The district court initially set the trial date for both the Apple and Samsung
`
`litigations for April 11, 2022, approximately two months from the Board’s statutory
`
`deadline for rendering a final written decision. EX-1046. The court’s ongoing stay
`
`pending resolution of the motion to transfer will likely introduce delays into the trial
`
`calendar of at least four months. See EX-1043; EX-1045. Thus, a corresponding
`
`shift of the trial calendar by the length of the stay would shift the trial dates to August
`
`11, 2022. This is more than two months after the latest statutory deadline for FWD.
`
`In light of the parties’ multiple agreements to delay the schedule, the evidence that
`
`the scheduled trial date will be two months after the expected FWD, and the
`
`uncertainty that continues to surround the scheduled trial date, this factor weighs
`
`against discretionary denial under 35 U.S.C. § 314(a). Sotera Wireless, Inc. v.
`
`Masimo Corp., IPR2020-01019, Paper 12 at 8-10 (PTAB Dec. 1, 2020)
`
`(precedential) (“Sotera”).
`
`2
`
`
`
`Attorney Docket No. 50095-0016IP1
`IPR of U.S. Patent No. 8,812,993
`More generally, “[t]his factor looks at the proximity between the trial date and
`
`the date of our final decision to assess the weight to be accorded a trial date set earlier
`
`than the expected final written decision date.” Shenzhen Carku Technology Co., Ltd.
`
`v. The Noco Company, IPR2020-00944, Paper 20 at 61 (PTAB Nov. 12, 2020)
`
`(“Shenzhen”). To this point, the Board has explained that, where a trial is “scheduled
`
`for about six months before the final decision, and there is at least some persuasive
`
`evidence that delays are possible, the efficiency and system integrity concerns that
`
`animate the Fintiv analysis are not as strong all other things being equal.” Id. Here,
`
`the available evidence suggests that the trial will be held well within six months of
`
`the FWD. Indeed, as noted above, the evidence suggests that the trial may well be
`
`months after the FWD. And the Federal Circuit has explained that “a court’s general
`
`ability to set a fast-paced schedule is not particularly relevant,” especially where “the
`
`forum [i.e., W.D. Tex.] itself has not historically resolved cases so quickly.” In re
`
`Apple Inc., No. 2020-115, slop op. at 16 (Fed. Cir. Nov. 9, 2020). Yet, even if the
`
`district court readopts its original trial date, this factor weighs strongly against
`
`discretionary denial under § 314(a).
`
`III. FACTOR 3: THE CURRENT STAY REDUCES THE RELEVANT
`RESOURCES THAT WILL HAVE BEEN EXPENDED AT THE
`TIME OF INSTITUTION
`Fintiv instructs the Board “to consider the ‘type of work already completed’
`
`and explains that the ‘investment factor is related to the trial date factor, in that more
`
`3
`
`
`
`Attorney Docket No. 50095-0016IP1
`IPR of U.S. Patent No. 8,812,993
`work completed by the parties and court in the parallel proceeding tends to support
`
`the arguments that the parallel proceeding is more advanced, a stay may be less
`
`likely, and instituting would lead to duplicative costs.’” Shenzhen, Paper 20 at 63
`
`(citing Fintiv, Paper 11, at 9-10). “The risk of duplication is most prominent for
`
`issues of patentability.” Id. At the time that the court’s stays were entered in the co-
`
`pending litigations, neither Apple nor Samsung had yet served initial invalidity
`
`contentions. The parties had not yet conferred on claim construction issues,
`
`Markman briefing was not due to be complete for over three months, and the
`
`Markman hearing was scheduled to take place April 8, 2021—nearly four months
`
`after the stay was issued. EX-1046. “[O]nce a party files a transfer motion,
`
`disposing of that motion should unquestionably take top priority,” and courts are to
`
`avoid “barrel[ing] ahead on the merits.” In re Apple Inc., No. 2020-115, slop op. at
`
`5. Thus, with a corresponding shift in the trial calendar by the length of the stay, the
`
`Markman hearing will not be held until two months after the institution decision is
`
`expected. “[I]f the district court has not issued orders related to the patent at issue
`
`in the petition at the time of the institution decision, that weighs against exercise of
`
`discretionary denial.” Shenzhen, Paper 20 at 63. Because the court and parties will
`
`have expended relatively few resources on issues related to patentability and will not
`
`have issued any orders related to patentability, this factor should weigh strongly
`
`against discretionary denial under § 314(a).
`
`4
`
`
`
`Attorney Docket No. 50095-0016IP1
`IPR of U.S. Patent No. 8,812,993
`IV. FACTOR 1: THE CURRENT STAYS INCREASE THE
`LIKELIHOOD THE COURT WILL GRANT A STAY PENDING IPR
`If the Board grants institution, Apple and Samsung intend to request stays of
`
`the co-pending litigations pending the IPRs. The Fintiv panel recognized that, in
`
`deciding whether to grant a stay pending IPR, the district court, “may consider
`
`similar factors related to the amount of time already invested by the district court
`
`and proximity of the trial date to the Board’s deadline for a final written decision.”
`
`Fintiv, Paper 11 at 7, n. 11-12. In other words, the district court considers the same
`
`facts that have been shown above to favor institution with respect to Fintiv factors 2
`
`and 3. Thus, there is specific evidence in this case that the court will be more
`
`inclined to grant a stay than in an average case, because the pending stay ensures
`
`less time will have been invested in the merits of the district court proceeding and
`
`the trial date can reasonably be scheduled after the Board’s FWD.
`
`At worst, prior to a district court’s ruling on a specific stay motion and absent
`
`specific evidence regarding how the court may rule on such a motion (like the
`
`evidence presented above), the Board has consistently held that this factor “does not
`
`weigh for or against denying institution in this case.” Sotera, Paper 12 at 14.
`
`V. CONCLUSION
`Factors 2 and 3 now strongly weigh against § 314(a) denial. Factor 1 is, at
`
`worst, neutral. And as explained in the petition, Factors 4-6 also weigh against
`
`§ 314(a) denial. Thus, discretionary denial under § 314(a) is inappropriate.
`
`5
`
`
`
`Attorney Docket No. 50095-0016IP1
`IPR of U.S. Patent No. 8,812,993
`
`
`
`
`
`
`
`
`
`
`
`
`
` Respectfully submitted,
`
`
`
`Date: ___March 10, 2021_____
`
`
`
`
`
`
`
`
`
`
`/W. Karl Renner/
`
`W. Karl Renner, Reg. No. 41,265
`David L. Holt, Reg. No. 65,161
`Tiffany C. Miller, Reg. 52,032
`James M. Heintz, Reg. No. 41,828
`
`
`Attorneys for Petitioner
`
`
`
`
`
`Attorney Docket No. 50095-0016IP1
`IPR of U.S. Patent No. 8,812,993
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4), the undersigned certifies that on March
`
`10, 2021, a complete and entire copy of this Petitioner’s Briefing Regarding
`
`Impact of Litigation Stay On Fintiv Analysis was provided via email, to the Patent
`
`Owner by serving the correspondence address of record as follows:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Robert M. Asher
`Bruce D. Sunstein
`Wendy J. Demoracski
`Sunstein LLP
`100 High Street
`Boston, MA 02110-2321
`
`Philip J. Graves
`Greer N. Shaw
`Hagens Berman Sobol Shapiro LLP
`301 North Lake Avenue, Suite 920
`Pasadena, CA 91101
`
`Mark S. Carlson
`Hagens Berman Sobol Shapiro LLP
`1301 Second Avenue, Suite 2000
`Seattle, WA 98101
`
`Email: sunsteinip@sunsteinlaw.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/ Edward G. Faeth /
`Edward Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
