`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
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`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
`
`
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`
`
`PATENT OWNER’S MOTION TO SUBMIT SUPPLEMENTAL
`INFORMATION
`37 C.F.R. § 42.123(b)
`
`
`005079-19/1814041 V1
`
`
`
`IPR2021-00145
`Motion to Submit Supplemental Information
`
`TABLE OF EXHIBITS
`
`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
`
`US Patent No. 5,406,307 (Hirayama, et al.)
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`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
`
`- i -
`
`
`
`IPR2021-00145
`Motion to Submit Supplemental Information
`
`
`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
`
`NEO
`Exhibit
`Number
`
`2010
`
`2011
`
`2012
`
`Neonode N1 Quick Start Guide, V 0.5
`
`2013
`
`Declaration of Craig Rosenberg, Ph.D. in Support of Patent Owner’s
`Response to Petition
`
`2014
`
`Neonode Confidential Business Plan, May 2003
`
`2015
`
`2016
`
`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
`
`2017
`
`US Patent No. 7,880,732
`
`2018
`
`2019
`
`2020
`
`2021
`
`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
`
`- ii -
`
`
`
`IPR2021-00145
`Motion to Submit Supplemental Information
`
`
`Description
`
`NEO
`Exhibit
`Number
`
`2023
`
`Neonode History
`
`2024
`
`Neonode Confidential Investment Memorandum, January 2004
`
`2025
`
`Research & Development and License Agreement between Neonode
`and Samsung Electronics Co., Ltd., effective July 13, 2005
`
`2026
`
`Excel Spreadsheet documenting Neonode sales
`
`2027
`
`“Pen Computing Magazine: The NeoNode N1”
`(https://pencomputing.com/WinCE/neonode-n1-review.html last
`accessed September 21, 2021)
`
`2028
`
`Unredacted copy of Patent Owner’s Sur-Reply
`
`2029
`
`Excerpts from deposition transcript of Benjamin B. Bederson, Ph.D.
`dated February 28, 2022, Case No. IPR2021-00144
`
`
`
`
`
`
`
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`
`
`- iii -
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`
`
`IPR2021-00145
`Motion to Submit Supplemental Information
`
`
`I. ARGUMENT
`
`Patent Owner respectfully requests that the Board accept a submission of
`
`supplemental information, pursuant to 37 C.F.R. § 42.123(b), consisting of pages
`
`162-65 of the February 28, 2022 deposition of Petitioners’ expert, Dr. Benjamin
`
`Bederson, taken in co-pending IPR2021-00144. The Board authorized this motion
`
`by email on March 7, 2022. Petitioners have informed Patent Owner that they take
`
`no position regarding the proposed submission.
`
`A. Consideration of the Supplemental Information Would Be in the
`Interests-Of-Justice
`
`Petitioners rely on Ren, EX1004, to supply the element of “tap-activatable
`
`icons” that is (among other things) missing in the Hisatomi reference. Pet., pp. 37-
`
`38. Ren discloses several different selection strategies, including a Direct Off
`
`strategy that it further breaks down into two different versions involving different
`
`gestures: aca and abca. While the aca gesture appears to reflect a
`
`tap, the abca does not; it reflects a sliding motion from outside the target to
`
`within the target. Ren illustrates the gestures as follows:
`
`
`
`
`
`
`
`In the Petition, Petitioners contended that the aca version of Ren’s
`
`Direct Off selection strategy “reflects a typical ‘tap’ selection technique.” Pet., p.
`
`
`
`- 1 -
`
`
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`IPR2021-00145
`Motion to Submit Supplemental Information
`
`37; EX1002, ¶135. They made no mention of the other version of Ren’s Direct Off
`
`selection strategy, abca.
`
`In their Reply, Petitioners argued, for the first time, that the abca
`
`version of Ren’s Direct Off strategy constitutes an example of “tapping” on a
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`display. Pet. Reply, pp. 3, 10. They rely principally on (mistaken) deposition
`
`testimony of Patent Owner’s expert, who confused “mouse up/mouse down”
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`activation with the issue of how to define “tap” during a portion of his deposition.
`
`Dr. Bederson, Petitioners’ expert, while not expressly stating that the abca
`
`gesture constitutes a tap, suggested that it does, EX1051, ¶24, and relied on the
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`abca gesture to bolster one of his arguments for motivation to change
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`Hisatomi’s touch-activated GUI icons to “tap-activated” icons. EX1051, ¶¶49-50.
`
`On February 28, 2022, Dr. Bederson was deposed in co-pending IPR2021-
`
`00144, which involves a patent (U.S. Patent No. 8,095,879) related as a parent to
`
`the patent at issue here. The ‘879 Patent includes claims reciting “tapping” as a
`
`selection technique. In this deposition, Dr. Bederson was asked whether a gesture
`
`involving “landing the pen just outside of the delete button, dragging it under [into]
`
`the delete button, and then lifting it off” would be understood by a POSA to be a
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`tap gesture. EX2029, 164:2-7. Dr. Bederson admitted:
`
`I think it probably doesn’t, but, I mean, sitting here today, it probably
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`doesn’t; . . . .
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`
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`- 2 -
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`
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`IPR2021-00145
`Motion to Submit Supplemental Information
`
`
`EX2029, 164:24-25. The gesture described by Patent Owner’s counsel in asking
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`the question is exactly the same as the abca version of Ren’s Direct Off
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`strategy. So, Dr. Bederson’s testimony directly contradicts Petitioners’ currently-
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`stated position that Ren’s abca Direct Off variant constitutes a “tap.” And
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`without their spurious effort to equate Ren’s abca gesture with a “tap,” their
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`already-unsupported case for modifying Hisatomi collapses entirely.
`
`B.
`
`The Supplemental Information Reasonably Could Not Have Been
`Obtained Earlier
`
`Patent Owner’s counsel could not reasonably have obtained this information
`
`during Patent Owner’s discovery period in this proceeding, because Petitioners did
`
`not assert their “abca” argument until after Dr. Bederson’s deposition had
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`been taken in this proceeding and Patent Owner had filed its Response. Dr.
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`Bederson was deposed in the co-pending IPR on February 28, 2022, Patent Owner
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`reached out to Petitioners’ counsel regarding filing this supplemental information
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`on March 3, 2022, and notified the Board of this matter on March 4, 2022. Patent
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`Owner has moved diligently to place this information before the Board.
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`II. CONCLUSION
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`For the foregoing reasons, the Board should grant Patent Owner’s motion.
`
`
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`- 3 -
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`
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`Dated: March 10, 2022
`
`Respectfully submitted,
`
`IPR2021-00145
`Motion to Submit Supplemental Information
`
`
`
`
`
`
`
`
`/Philip J. Graves/
`Philip J. Graves (pro hac vice)
`philipg@hbsslaw.com
`HAGENS BERMAN SOBOL SHAPIRO LLP
`301 North Lake Avenue, Suite 920
`Pasadena, CA 91101-4129
`(213) 330-7150 (phone)
`(213) 330-7152 (fax)
`
`Robert M. Asher
`Reg. No. 30,445
`rasher@sunsteinlaw.com
`SUNSTEIN LLP
`100 High Street
`Boston, MA 02110-2321
`(617) 443-9292 (phone)
`(617) 443-0004 (fax)
`
`
`
`- 4 -
`
`
`
`IPR2021-00145
`Motion to Submit Supplemental Information
`
`
`CERTIFICATE OF SERVICE
`
`It is certified that on March 10, 2022, the foregoing document has been
`
`served on Petitioners as provided in 37 C.F.R. § 42.6(e) via electronic mail at
`
`IPR50095-0015P1@fr.com.
`
`Dated: March 10, 2022
`
`Respectfully submitted,
`
`
`
`
`
`/William Stevens/
`HAGENS BERMAN SOBOL SHAPIRO LLP
`301 North Lake Avenue, Suite 920
`Pasadena, CA 91101-4129
`(213) 330-7150 (phone)
`(213) 330-7152 (fax)
`
`
`
`
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`- 1 -
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`
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