`
`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 DEMONSTRATIVE EXHIBITS
`(EXHIBIT 2031)
`
`REDACTED PUBLIC VERSION
`
`
`
`
`
`
`
`
`
`
`
`
`Samsung Electronics Co. Ltd., et al. v.
`Neonode Smartphone LLC
`
`IPR2021-00145
`U.S. Patent No. 8,812,993
`
`PATENT OWNER
`NEONODE SMARTPHONE LLC
`March 17, 2022
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`1
`
`
`
`Table Of Contents
`
`A.
`
`B.
`C.
`D.
`E.
`F.
`
`G.
`
`H.
`
`Petitioners Fail to Show that Hisatomi Teaches or Renders Obvious “A Tap-Present
`State, Wherein a Plurality of Tap-Activatable Icons . . . Are Present.”
`1.
`Patent Owner’s Construction of “Tap” is Supported by the Specification, the
`Petition and Petitioners’ Expert.
`Hisatomi Does Not Teach Tap Activation of the GUI Buttons.
`2.
`Petitioners Fail to Show a Motivation to Combine Ren and Hisatomi.
`3.
`Petitioners Fail to Show that Hisatomi’s GUI Buttons are Icons for “System Functions.”
`Petitioners Fail to Show that Hansen Teaches the Preamble’s “Electronic Device.”
`Petitioners Fail to Show that Hansen Teaches the Use of Icons for “System Functions.”
`Petitioners Fail to Show Any Motivation to Combine Hansen and Gillespie.
`Petitioners Fail to Show that Either Hisatomi or Hansen Teaches Tap-Activatable Icons
`that are Not Displayed Within a Window Frame.
`Petitioners Fail to Show Any Motivation to Add a Clock or Alarm Icon to Hisatomi or
`Hansen.
`Objective Evidence of Nonobviousness Further Undermines Petitioners’ Case.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`2
`
`
`
`Table Of Contents
`
`A.
`
`B.
`C.
`D.
`E.
`F.
`
`G.
`
`H.
`
`Petitioners Fail to Show that Hisatomi Teaches or Renders Obvious “A Tap-Present
`State, Wherein a Plurality of Tap-Activatable Icons . . . Are Present.”
`1.
`Patent Owner’s Construction of “Tap” is Supported by the Specification, the
`Petition and Petitioners’ Expert.
`Hisatomi Does Not Teach Tap Activation of the GUI Buttons.
`2.
`Petitioners Fail to Show a Motivation to Combine Ren and Hisatomi.
`3.
`Petitioners Fail to Show that Hisatomi’s GUI Buttons are Icons for “System Functions.”
`Petitioners Fail to Show that Hansen Teaches the Preamble’s “Electronic Device.”
`Petitioners Fail to Show that Hansen Teaches the Use of Icons for “System Functions.”
`Petitioners Fail to Show Any Motivation to Combine Hansen and Gillespie.
`Petitioners Fail to Show that Either Hisatomi or Hansen Teaches Tap-Activatable Icons
`that are Not Displayed Within a Window Frame.
`Petitioners Fail to Show Any Motivation to Add a Clock or Alarm Icon to Hisatomi or
`Hansen.
`Objective Evidence of Nonobviousness Further Undermines Petitioners’ Case.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`3
`
`
`
`Claim 1 Requires “A Tap-Present State, Wherein A Plurality of
`Tap-Activatable Icons . . . Are Present”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1001, p. 6:50-55
`
`4
`
`
`
`“Tap:” The input device (1) touches the screen,
`and then (2) lifts directly and immediately off the screen
`
`Craig Rosenberg, Ph.D.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX2001, ¶45, POR, p. 9
`
`5
`
`
`
`The Specification Supports Patent Owner’s Construction
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX2013, ¶47; EX1001, 4:41-42, Fig. 4 ; POR, pp. 8-9; Sur-Reply, p. 3
`
`6
`
`
`
`Petitioners Agree:
`Tap = Touch the Screen and Lift Directly Off
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Pet., p. 37
`
`7
`
`
`
`Petitioners’ Expert Agrees:
`Tap = Touch the Screen and Lift Directly Off
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Pet., p. 37; EX1002, ¶40; Sur-Reply, p. 3
`
`8
`
`
`
`Bederson Deposition: Tap = Pressing the Screen and
`Releasing It In the Same or Almost the Same Position
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX2018 at 60-61; Sur-Reply, p. 4
`
`9
`
`
`
`Petitioners Now Say that Tap Includes Ren’s abca
`Gesture, But That’s Not What They Said in the Petition
`
`Petitioners relied only on aca in
`the Petition.
`
`Bederson relied only on aca in
`his initial declaration.
`
`Petitioners’ new abca theory is inadmissible. 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).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Pet., p. 37; EX1002, ¶135; Sur-Reply, pp. 1-3
`
`10
`
`
`
`Petitioners’ Expert Contradicts Petitioners: Ren’s abca
`Gesture “Probably Doesn’t” Constitute a Tap
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, p. 10; EX2029 at 163:24 – 164:25
`
`11
`
`
`
`Table Of Contents
`
`A.
`
`B.
`C.
`D.
`E.
`F.
`
`G.
`
`H.
`
`Petitioners Fail to Show that Hisatomi Teaches or Renders Obvious “A Tap-Present
`State, Wherein a Plurality of Tap-Activatable Icons . . . Are Present.”
`1.
`Patent Owner’s Construction of “Tap” is Supported by the Specification, the
`Petition and Petitioners’ Expert.
`Hisatomi Does Not Teach Tap Activation of the GUI Buttons.
`2.
`Petitioners Fail to Show a Motivation to Combine Ren and Hisatomi.
`3.
`Petitioners Fail to Show that Hisatomi’s GUI Buttons are Icons for “System Functions.”
`Petitioners Fail to Show that Hansen Teaches the Preamble’s “Electronic Device.”
`Petitioners Fail to Show that Hansen Teaches the Use of Icons for “System Functions.”
`Petitioners Fail to Show Any Motivation to Combine Hansen and Gillespie.
`Petitioners Fail to Show that Either Hisatomi or Hansen Teaches Tap-Activatable Icons
`that are Not Displayed Within a Window Frame.
`Petitioners Fail to Show Any Motivation to Add a Clock or Alarm Icon to Hisatomi or
`Hansen.
`Objective Evidence of Nonobviousness Further Undermines Petitioners’ Case.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`12
`
`
`
`Tap Activation v. Touch Activation
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX2013, ¶65; POR, pp. 17-18
`
`13
`
`
`
`Hisatomi Teaches Touch Activation of GUI Button Icons,
`Not Tap Activation
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX2005, ¶30; POR, pp. 21-22
`
`14
`
`
`
`Hisatomi Teaches Touch Activation of GUI Button Icons,
`Not Tap Activation (cont’d)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX2013, ¶64; EX1005, ¶¶54-55, Fig. 13, 15; POR, pp. 17-20
`
`15
`
`
`
`Petitioners’ Expert: Hisatomi Activates GUI Buttons on Touch
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1002, ¶130; POR, pp. 20-21
`
`16
`
`
`
`Hisatomi: “Off” Means Off
`It Does Not Mean “Activate Function”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1005, ¶0039; POR, pp. 18-20
`
`17
`
`
`
`Petitioners Fail to Cite to a Single Instance of Tap Activation in
`Hisatomi
`
`• POR: All of Bederson’s examples of “tap”
`activation clearly disclose touch.
`
`• Petitioners’ Reply: Okay, but “selection”
`could include tap.
`
`• However:
`• Hisatomi states that functions are
`executed by “touching” the GUI
`buttons.
`• Hisatomi repeatedly specifies touch,
`never specifies tap.
`• Figure 13 indicates touch.
`• Bederson still does not identify a
`single instance of tap.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1005, ¶¶ 0030, 0054-55, Fig 13; POR, pp. 17-20
`
`18
`
`
`
`Table Of Contents
`
`A.
`
`B.
`C.
`D.
`E.
`F.
`
`G.
`
`H.
`
`Petitioners Fail to Show that Hisatomi Teaches or Renders Obvious “A Tap-Present
`State, Wherein a Plurality of Tap-Activatable Icons . . . Are Present.”
`1.
`Patent Owner’s Construction of “Tap” is Supported by the Specification, the
`Petition and Petitioners’ Expert.
`Hisatomi Does Not Teach Tap Activation of the GUI Buttons.
`2.
`Petitioners Fail to Show a Motivation to Combine Ren and Hisatomi.
`3.
`Petitioners Fail to Show that Hisatomi’s GUI Buttons are Icons for “System Functions.”
`Petitioners Fail to Show that Hansen Teaches the Preamble’s “Electronic Device.”
`Petitioners Fail to Show that Hansen Teaches the Use of Icons for “System Functions.”
`Petitioners Fail to Show Any Motivation to Combine Hansen and Gillespie.
`Petitioners Fail to Show that Either Hisatomi or Hansen Teaches Tap-Activatable Icons
`that are Not Displayed Within a Window Frame.
`Petitioners Fail to Show Any Motivation to Add a Clock or Alarm Icon to Hisatomi or
`Hansen.
`Objective Evidence of Nonobviousness Further Undermines Petitioners’ Case.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`19
`
`
`
`Ren’s Selection Strategies
`
`• Direct On: Touch
`
`• Direct Off version aca:
`Tap
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1004, pp. 388-89; POR, pp. 22-23
`
`20
`
`
`
`Petitioners Rely on Ren, But Ignore its Teaching
`
`Selection Time:
`
`But:
`
`Experiment
`One: Direct On
`(touch) better
`than Direct Off
`
`Experiment
`Two: Direct On
`(touch) better
`than Direct Off
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Pet., pp. 37-38; EX1006, pp. 395, 409; POR, pp. 24-26
`
`21
`
`
`
`Petitioners Rely on Ren, But Ignore its Teaching (cont’d)
`
`Error Rate: No significant difference at
`real-life target sizes; or, Direct On
`(touch) superior.
`
`Experiment One: No significant difference at 3mm.
`
`Experiment Two: No significant difference at 2.5mm.
`
`Petitioners agree: No significant difference at
`larger targets.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1006, pp. 399, 407-08; POR, pp. 24-26; Reply, p. 7; Sur-Reply, pp. 5-7
`
`22
`
`
`
`Petitioners’ Response: Look at Error Rates for 1mm – 2mm
`Icons
`
`Petitioners: Mean error rates show lower error
`rates for Direct Off versus Direct On.
`
`However:
`• This includes 1mm – 2mm target sizes,
`substantially smaller than in Hisatomi (see
`below).
`• At 2.5mm and 3mm target sizes there is no
`significant difference in error rates between
`Direct On (touch) and Direct Off.
`• At 3mm and larger target sizes Ren indicates
`that Direct On (touch) has a lower error rate
`than Direct Off.
`
`And:
`• What about selection time, which shows that
`Direct On (touch) is better? Petitioners are
`silent.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1006, pp. 408-09; Sur-Reply, pp. 5-7
`
`23
`
`
`
`Hisatomi’s Icons: At Least 3mm
`
`Hisatomi is notebook-sized:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ex1005, ¶0012; Pet., pp. 34, 36; EX2013, ¶93; POR, pp. 25-26; Sur-Reply, pp. 5-7
`
`24
`
`
`
`No Reason to Modify Hisatomi’s Touch-Activated GUI Buttons
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX2013, ¶¶97-98; POR, pp. 27-28
`
`25
`
`
`
`Petitioners Fail to Identify a Credible Motivation
`
`Petitioners say:
`• Hisatomi identifies no benefit for
`touch over tap.
`
`However:
`• Patent Owner bears no burden to
`show that it does.
`
`• Tap was a common selection
`technique.
`
`• Tap would differentiate from drag.
`
`• Error correction, if abca = tap.
`
`• Patent Owner does not contend
`otherwise, but this does not carry
`Petitioners’ burden.
`• No benefit – drag is used to open
`the pull-out menu, not to activate
`GUI buttons.
`• False premise: abca =/=
`tap (see above).
`• No articulated motivation for
`icons of size in Hisatomi.
`• Also: New argument, so should
`be disregarded.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`POR, pp. 27-29; Sur-Reply, pp. 7-8
`
`26
`
`
`
`Table Of Contents
`
`A.
`
`B.
`C.
`D.
`E.
`F.
`
`G.
`
`H.
`
`Petitioners Fail to Show that Hisatomi Teaches or Renders Obvious “A Tap-Present
`State, Wherein a Plurality of Tap-Activatable Icons . . . Are Present.”
`1.
`Patent Owner’s Construction of “Tap” is Supported by the Specification, the
`Petition and Petitioners’ Expert.
`Hisatomi Does Not Teach Tap Activation of the GUI Buttons.
`2.
`Petitioners Fail to Show a Motivation to Combine Ren and Hisatomi.
`3.
`Petitioners Fail to Show that Hisatomi’s GUI Buttons are Icons for “System Functions.”
`Petitioners Fail to Show that Hansen Teaches the Preamble’s “Electronic Device.”
`Petitioners Fail to Show that Hansen Teaches the Use of Icons for “System Functions.”
`Petitioners Fail to Show Any Motivation to Combine Hansen and Gillespie.
`Petitioners Fail to Show that Either Hisatomi or Hansen Teaches Tap-Activatable Icons
`that are Not Displayed Within a Window Frame.
`Petitioners Fail to Show Any Motivation to Add a Clock or Alarm Icon to Hisatomi or
`Hansen.
`Objective Evidence of Nonobviousness Further Undermines Petitioners’ Case.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`27
`
`
`
`What are “System Functions?”
`
`Patent Owner: “Services or settings of the
`operating system.”
`
`Petitioners: ??
`• Petition: No construction.
`• Bederson’s declaration: No
`construction.
`• Bederson’s deposition: “I have a
`clear understanding” of the
`term, but I won’t articulate it.
`• Petitioners’ Reply: No
`construction.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1001; Pet., pp. 32-38; EX1002, ¶¶126-36; EX2018, 14:20 – 22:16
`
`28
`
`
`
`System Function: The Specification
`
`Two embodiments:
`
`• If there is a current active
`application, then the icons
`represent services or
`functions for the current
`active application.
`
`• If there is no current active
`application, then the icons
`represent services or settings
`of the operating system.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1001, p. 4:20-40; POR, pp. 9-10
`
`29
`
`
`
`System Function: The Prosecution File
`
`A “system function” is not,
`among other things:
`
`• Keyboard character entry.
`
`• Controls in a window for
`toggling between
`applications.
`
`• Keys and controls in a
`calculator application.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1003, at 414-15; Sur-Reply, p. 9
`
`30
`
`
`
`Petitioners’ Response: Look at Cancelled Claims for an
`Irrelevant Point
`
`Petitioners Say:
`• Prosecution file “system
`function” includes an application.
`
`Red Herring Alert:
`• The claim from which these claims
`depended recited “applications,” not
`“system functions;” different scope.
`• These claims were cancelled; they are
`not at issue here.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1003, at 567-68, 572-73; Sur-Reply, pp. 10-11
`
`31
`
`
`
`Hisatomi Discloses a Digital Camera
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1005, ¶¶0021-15; Figs. 1-3; POR, pp. 30-33; Sur-Reply, p. 14
`
`32
`
`
`
`The Problem Hisatomi Sought to Solve: A Digital Camera
`Problem
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1005, ¶¶0004-06; Sur-Reply, pp. 14-15
`
`33
`
`
`
`Hisatomi’s “System” is a Camera Application
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1005, ¶¶34-36, Fig. 9; POR, pp. 30-33; Sur-Reply, p. 14
`
`34
`
`
`
`Hisatomi’s GUI Buttons Are Not Icons for a Plurality of System
`Functions
`
`But:
`Paragraphs 13-14 and Figure 1 describe
`hardware, not software. There are no
`icons.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Pet., pp. 60-61; EX1002, ¶178; EX1005, ¶¶0013-14, Fig. 1; POR, pp. 30-33; Sur-Reply, pp. 11-16
`
`35
`
`
`
`Hisatomi’s GUI Buttons Are Not Icons for a
`Plurality of System Functions (cont’d)
`
`Bederson: Hisatomi’s “system functions”
`include “character input, color palette
`selection, image editing or processing,
`word processing, search, saving, user
`settings, and more detailed settings.”
`
`‘993 Patent: These are functions for an
`active application:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1001, 4:20-35, EX1002, ¶¶173, 178; EX1005, ¶¶ 0022-23; POR, pp. 30-33; Sur-Reply, pp. 11-16
`
`36
`
`
`
`Hisatomi’s “Search” Function:
`Images, Not Icons for a Plurality of System Functions
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1005, ¶¶0022-23; Fig. 6, Fig. 19; Sur-Reply, pp. 12-13
`
`37
`
`
`
`Hisatomi’s “Character Input” Function:
`Character Entry Keys
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1005, ¶¶0022-23; Fig. 6, Fig. 19; Sur-Reply, pp. 12-13
`
`38
`
`
`
`Hisatomi’s “Image Editing” Function:
`Images, Not Icons for a Plurality of System Functions
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1005, ¶¶0022-23; Fig. 6, Fig. 19; Sur-Reply, pp. 12-13
`
`39
`
`
`
`Hisatomi’s “Save Image” Function:
`Images, Not Icons for a Plurality of System Functions
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1005, ¶¶0022-23; Fig. 6, Fig. 19; Sur-Reply, pp. 12-13
`
`40
`
`
`
`Hisatomi’s “Settings” Menu
`
`Petitioners also point to Hisatomi’s
`“’detailed settings menu’ related to the
`‘start button’” depicted in Figure 30
`(screen D84).
`
`But:
`• The “start button” here is the start button
`for the settings menu (not the device):
`
`• No indication that these “settings” are for
`a system function rather than Hisatomi’s
`camera application:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, pp. 15-16; EX1005, ¶¶0114, 0125, Fig. 30; EX1051, ¶68; Sur-Reply, p. 13
`
`41
`
`
`
`Table Of Contents
`
`A.
`
`B.
`C.
`D.
`E.
`F.
`
`G.
`
`H.
`
`Petitioners Fail to Show that Hisatomi Teaches or Renders Obvious “A Tap-Present
`State, Wherein a Plurality of Tap-Activatable Icons . . . Are Present.”
`1.
`Patent Owner’s Construction of “Tap” is Supported by the Specification, the
`Petition and Petitioners’ Expert.
`Hisatomi Does Not Teach Tap Activation of the GUI Buttons.
`2.
`Petitioners Fail to Show a Motivation to Combine Ren and Hisatomi.
`3.
`Petitioners Fail to Show that Hisatomi’s GUI Buttons are Icons for “System Functions.”
`Petitioners Fail to Show that Hansen Teaches the Preamble’s “Electronic Device.”
`Petitioners Fail to Show that Hansen Teaches the Use of Icons for “System Functions.”
`Petitioners Fail to Show Any Motivation to Combine Hansen and Gillespie.
`Petitioners Fail to Show that Either Hisatomi or Hansen Teaches Tap-Activatable Icons
`that are Not Displayed Within a Window Frame.
`Petitioners Fail to Show Any Motivation to Add a Clock or Alarm Icon to Hisatomi or
`Hansen.
`Objective Evidence of Nonobviousness Further Undermines Petitioners’ Case.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`42
`
`
`
`An “Electronic Device” = A Mobile Handheld Computer
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1001, 1:14-23, 33-47; 1:55 – 2:11; 6:50-65; POR, pp. 5-7
`
`43
`
`
`
`Claim 1 Requires “An Electronic Device”
`
`Here, that means one device having
`all the recited structure. Convolve,
`Inc. v. Compaq Comput. Corp., 812
`F.3d 1313, 1321 (Fed. Cir. 2016);
`Varma v. Int’l. Bus. Machines Corp.,
`816 F.3d 1352 (Fed. Cir. 2016).
`
`Regardless of whether the Board
`adopts Patent Owner’s construction.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1001, 6:50-65; POR, pp. 46-52; Sur-Reply. P. 17
`
`44
`
`
`
`Convolve, Inc. v. Compaq Comput. Corp.
`812 F.3d 1313, 1321 (Fed. Cir. 2016)
`
`• Claim: “User interface for…working with a processor…comprising:” a means for
`controlling seek time on a data storage device, and a “means for causing the
`processor to output commands to the data storage device.”
`• “[T]he language and structure of claim 1 demonstrate a clear intent to tie the
`processor that ‘output[s] commands to the data storage device’ to the ‘user
`interface.’”
`• “This reference to ‘the processor,’ referring back to the ‘a processor’ recited in
`preamble, supports a conclusion that the recited user interface is ‘operatively
`working with’ the same processor to perform all of the recited steps. In other words,
`the claim language requires a processor associated with the user interface to issue
`the shaped commands of the claims.” (emphasis added)
`• Conclusion: the claims “require the user interface to work with a single processor in
`performing all of the claim steps.”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`POR, pp. 46-49
`
`45
`
`
`
`Varma v. Int’l. Bus. Machines Corp.
`816 F.3d 1352, 1362-63 (Fed. Cir. 2016)
`
`• Claims: recited “a statistical analysis request corresponding to two or more
`selected investments.”
`• “Comprising means that the claim can be met by a system that contains features
`over and above those specifically required by the claim element, but only if the
`system still satisfies the specific claim-element requirements; the claim does not
`cover systems whose unclaimed features make the claim elements no longer
`satisfied.”
`• The phrase at issue could embrace a system that receives more than one
`request, provided that “a request” corresponds to two or more selected
`investments.
`• “[H]ere the question is not whether there can be more than one request in a
`claim-covered system: there can. Rather, the question is whether ‘a’ can serve to
`negate what is required by the language following ‘a’: a ‘request’ (a singular
`term) that ‘correspond[s]’ to ‘two or more selected investments.’ It cannot.”
`• “For a dog owner to have ‘a dog that rolls over and fetches sticks,’ it does not
`suffice that he have two dogs, each able to perform just one of the tasks.”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`POR, pp. 46-49
`
`46
`
`
`
`Hansen Discloses a Conventional Multi-Component Desktop
`System, Not An Electronic Device
`
`Conventional component monitor,
`and separate touch-sensitive screen
`overlaying the monitor.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1029, 4:8-23, Fig. 1; EX2003; POR, pp. 49-52
`
`47
`
`
`
`Petitioners: Let’s Speculate and Come Up With New Grounds!
`
`Petitioners:
`
`But:
`
`• Figure 1 may be any form factor
`
`• The only example of a specific form factor is a
`separate touch-sensitive overlay, the Mac-n-
`Touch.
`• Speculation regarding Hansen’s form factor
`does not satisfy Petitioners’ burden. Wasica
`Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d
`1272 (Fed. Cir. 2017).
`
`• POSA would have understood that
`Hansen “intended” its methods to apply
`to other computers.
`
`• Obviousness: A new ground:
`
`• POSA would have found it obvious to apply
`Hansen’s teachings to other computers.
`
`• Again – obviousness, a new ground.
`• Bederson fails to provide any basis for
`“obviousness” beyond his ipse dixit.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Pet., p. 63; EX1051, ¶87; Sur-Reply, pp. 17-18
`
`48
`
`
`
`Table Of Contents
`
`A.
`
`B.
`C.
`D.
`E.
`F.
`
`G.
`
`H.
`
`Petitioners Fail to Show that Hisatomi Teaches or Renders Obvious “A Tap-Present
`State, Wherein a Plurality of Tap-Activatable Icons . . . Are Present.”
`1.
`Patent Owner’s Construction of “Tap” is Supported by the Specification, the
`Petition and Petitioners’ Expert.
`Hisatomi Does Not Teach Tap Activation of the GUI Buttons.
`2.
`Petitioners Fail to Show a Motivation to Combine Ren and Hisatomi.
`3.
`Petitioners Fail to Show that Hisatomi’s GUI Buttons are Icons for “System Functions.”
`Petitioners Fail to Show that Hansen Teaches the Preamble’s “Electronic Device.”
`Petitioners Fail to Show that Hansen Teaches the Use of Icons for “System Functions.”
`Petitioners Fail to Show Any Motivation to Combine Hansen and Gillespie.
`Petitioners Fail to Show that Either Hisatomi or Hansen Teaches Tap-Activatable Icons
`that are Not Displayed Within a Window Frame.
`Petitioners Fail to Show Any Motivation to Add a Clock or Alarm Icon to Hisatomi or
`Hansen.
`Objective Evidence of Nonobviousness Further Undermines Petitioners’ Case.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`49
`
`
`
`No “Icons for a . . . Plurality of . . . System Functions”
`
`Application running in a working
`window:
`
`Nothing in Hansen suggesting that the
`icons are for system functions.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1029, 6:30-33; POR, pp. 52-53; Sur-Reply, pp. 17-18
`
`50
`
`
`
`Petitioners’ New Ground
`
`Petitioners’ Reply: “A POSA would have found it
`obvious” that Hansen’s system shipped with
`programs that were system functions.
`
`Obviousness – again, a new ground:
`
`And pure speculation – no explanation as to how
`or why a POSA would have applied Hansen’s
`method to icons for system functions.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Pet, p. 65; Reply, pp. 19-20; Sur-Reply, pp. 18-19
`
`51
`
`
`
`Table Of Contents
`
`A.
`
`B.
`C.
`D.
`E.
`F.
`
`G.
`
`H.
`
`Petitioners Fail to Show that Hisatomi Teaches or Renders Obvious “A Tap-Present
`State, Wherein a Plurality of Tap-Activatable Icons . . . Are Present.”
`1.
`Patent Owner’s Construction of “Tap” is Supported by the Specification, the
`Petition and Petitioners’ Expert.
`Hisatomi Does Not Teach Tap Activation of the GUI Buttons.
`2.
`Petitioners Fail to Show a Motivation to Combine Ren and Hisatomi.
`3.
`Petitioners Fail to Show that Hisatomi’s GUI Buttons are Icons for “System Functions.”
`Petitioners Fail to Show that Hansen Teaches the Preamble’s “Electronic Device.”
`Petitioners Fail to Show that Hansen Teaches the Use of Icons for “System Functions.”
`Petitioners Fail to Show Any Motivation to Combine Hansen and Gillespie.
`Petitioners Fail to Show that Either Hisatomi or Hansen Teaches Tap-Activatable Icons
`that are Not Displayed Within a Window Frame.
`Petitioners Fail to Show Any Motivation to Add a Clock or Alarm Icon to Hisatomi or
`Hansen.
`Objective Evidence of Nonobviousness Further Undermines Petitioners’ Case.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`52
`
`
`
`No Motivation to Import Gillespie’s “Affordance” Into Hansen
`
`• Petitioners: Add a graphic to Hansen:
`
`• But . . . Hansen sought to reduce clutter,
`not add to it:
`
`• Petitioners’ Response: It’s not a window.
`
`• Rejoinder: So what? Whatever you call it,
`it clutters the screen, so a POSA would
`not have added it to Hansen.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Pet., p. 69; EX1029, 2:11-14, 6:28-37; POR, pp. 54-56; Sur-Reply, p. 19
`
`53
`
`
`
`Table Of Contents
`
`A.
`
`B.
`C.
`D.
`E.
`F.
`
`G.
`
`H.
`
`Petitioners Fail to Show that Hisatomi Teaches or Renders Obvious “A Tap-Present
`State, Wherein a Plurality of Tap-Activatable Icons . . . Are Present.”
`1.
`Patent Owner’s Construction of “Tap” is Supported by the Specification, the
`Petition and Petitioners’ Expert.
`Hisatomi Does Not Teach Tap Activation of the GUI Buttons.
`2.
`Petitioners Fail to Show a Motivation to Combine Ren and Hisatomi.
`3.
`Petitioners Fail to Show that Hisatomi’s GUI Buttons are Icons for “System Functions.”
`Petitioners Fail to Show that Hansen Teaches the Preamble’s “Electronic Device.”
`Petitioners Fail to Show that Hansen Teaches the Use of Icons for “System Functions.”
`Petitioners Fail to Show Any Motivation to Combine Hansen and Gillespie.
`Petitioners Fail to Show that Either Hisatomi or Hansen Teaches Tap-Activatable Icons
`that are Not Displayed Within a Window Frame.
`Petitioners Fail to Show Any Motivation to Add a Clock or Alarm Icon to Hisatomi or
`Hansen.
`Objective Evidence of Nonobviousness Further Undermines Petitioners’ Case.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`54
`
`
`
`Window Frames Define Boundary Between Different Regions
`of the GUI
`
`Response from Petitioners?
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1001, 7:3-5; EX2013, ¶113; POR, pp. 33-35; Sur-Reply, pp. 21-22
`
`55
`
`
`
`Claim 3 – Hisatomi
`
`Petitioners: Look at Hisatomi Figs. 7 &
`28:
`
`But . . . These clearly show window
`frames:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Pet, p. 51; EX2013, ¶114; POR, pp. 33-35; Sur-Reply, pp. 21-22
`
`56
`
`
`
`Claim 3 – Hisatomi
`
`And every other of Petitioners’ Hisatomi examples depicts a frame:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX2013, ¶¶116-17; Sur-Reply, p. 21
`
`57
`
`
`
`Claim 3 – Hansen
`
`Petitioners: Look at the icon stack:
`
`But . . . The icon stack is within its own
`workspace independent of the rest of the
`GUI:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Pet., p. 77; EX2013, ¶170; POR, pp. 58-59; Sur-Reply, pp. 21-22
`
`58
`
`
`
`Table Of Contents
`
`A.
`
`B.
`C.
`D.
`E.
`F.
`
`G.
`
`H.
`
`Petitioners Fail to Show that Hisatomi Teaches or Renders Obvious “A Tap-Present
`State, Wherein a Plurality of Tap-Activatable Icons . . . Are Present.”
`1.
`Patent Owner’s Construction of “Tap” is Supported by the Specification, the
`Petition and Petitioners’ Expert.
`Hisatomi Does Not Teach Tap Activation of the GUI Buttons.
`2.
`Petitioners Fail to Show a Motivation to Combine Ren and Hisatomi.
`3.
`Petitioners Fail to Show that Hisatomi’s GUI Buttons are Icons for “System Functions.”
`Petitioners Fail to Show that Hansen Teaches the Preamble’s “Electronic Device.”
`Petitioners Fail to Show that Hansen Teaches the Use of Icons for “System Functions.”
`Petitioners Fail to Show Any Motivation to Combine Hansen and Gillespie.
`Petitioners Fail to Show that Either Hisatomi or Hansen Teaches Tap-Activatable Icons
`that are Not Displayed Within a Window Frame.
`Petitioners Fail to Show Any Motivation to Add a Clock or Alarm Icon to Hisatomi or
`Hansen.
`Objective Evidence of Nonobviousness Further Undermines Petitioners’ Case.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`59
`
`
`
`Add A Clock Icon? Why?
`
`Persistent clock display – conventional solution, and superior
`to a clock icon
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX2013, ¶¶136, 176; POR, pp. 42-43, 61; Sur-Reply, p. 22
`
`60
`
`
`
`Add An Alarm Icon? Again – Why?
`
`Hisatomi: No reason to add an alarm
`function, let alone an alarm icon
`
`Hansen: Would just add clutter
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX2013, ¶¶143, 145, 177; POR, pp. 43-45, 61-62; Sur-Reply, p. 22
`
`61
`
`
`
`Table Of Contents
`
`A.
`
`B.
`C.
`D.
`E.
`F.
`
`G.
`
`H.
`
`Petitioners Fail to Show that Hisatomi Teaches or Renders Obvious “A Tap-Present
`State, Wherein a Plurality of Tap-Activatable Icons . . . Are Present.”
`1.
`Patent Owner’s Construction of “Tap” is Supported by the Specification, the
`Petition and Petitioners’ Expert.
`Hisatomi Does Not Teach Tap Activation of the GUI Buttons.
`2.
`Petitioners Fail to Show a Motivation to Combine Ren and Hisatomi.
`3.
`Petitioners Fail to Show that Hisatomi’s GUI Buttons are Icons for “System Functions.”
`Petitioners Fail to Show that Hansen Teaches the Preamble’s “Electronic Device.”
`Petitioners Fail to Show that Hansen Teaches the Use of Icons for “System Functions.”
`Petitioners Fail to Show Any Motivation to Combine Hansen and Gillespie.
`Petitioners Fail to Show that Either Hisatomi or Hansen Teaches Tap-Activatable Icons
`that are Not Displayed Within a Window Frame.
`Petitioners Fail to Show Any Motivation to Add a Clock or Alarm Icon to Hisatomi or
`Hansen.
`Objective Evidence of Nonobviousness Further Undermines Petitioners’ Case.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`62
`
`
`
`The Neonode Phones Embodied the Claimed Interface
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX2012; EX2019, ¶¶5-11; POPR, pp. 49-50; POR, pp. 62-63; Sur-Reply, pp. 23-24
`
`63
`
`
`
`Sales of Neonode Phones With the Interface
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1054, 19:3-25; EX2015, ¶11; EX2016, ¶¶9-10; EX2022, ¶6; EX2024, pp. 2-3; POR, p. 63; Sur-Reply, pp. 24-25
`
`64
`
`
`
`Industry Praise – For the Interface
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX2015, ¶¶3, 8; EX2016, ¶11; EX2027, p. 2; POR, pp. 64-65; Sur-Reply, pp. 25-26
`
`65
`
`
`
`Initial Skepticism About the Interface
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX2016, ¶12; POR, pp. 65-66; Sur-Reply, p. 26
`
`66
`
`
`
`IPR2021-00145
`Demonstrative Exhibits
`
`
`CERTIFICATE OF SERVICE
`
`It is certified that on March 14, 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 14, 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)
`
`
`
`
`
`
`
`