`
`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)
`
`
`
`
`
`
`
`
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
