Samsung Electronics Co. Ltd., Samsung Electronics America,
`Inc., and Apple Inc. v. Neonode Smartphone LLC
`
`IPR2021-00145
`U.S. Patent No. 8,812,993
`
`Petitioners' Demonstrative Slides
`
`Before Hon. Michelle N. Ankenbrand, Kara L. Szpondowski, and Christopher L. Ogden
`
`March 17, 2022
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`DEMONSTRATIVE EXHIBIT-NOT EVIDENCE
`
`1
`
`EXHIBIT 1060
`Samsung et al. v. Neonode
`IPR2021-00145
`
`
`Inc., and Apple Inc. v. Neonode Smartphone LLC
`
`IPR2021-00145
`U.S. Patent No. 8,812,993
`
`Petitioners' Demonstrative Slides
`
`Before Hon. Michelle N. Ankenbrand, Kara L. Szpondowski, and Christopher L. Ogden
`
`March 17, 2022
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`DEMONSTRATIVE EXHIBIT-NOT EVIDENCE
`
`1
`
`EXHIBIT 1060
`Samsung et al. v. Neonode
`IPR2021-00145
`
`
`
`Table of Contents
`
`• Introduction
`
`• Claim Construction
`
`Slides 3-6
`
`Slides 7-28
`
`• Ground 1 (Hisatomi and Ren, claims 1, 3-8)
`
`Slides 29-67
`
`• Ground 2 (Hansen and Gillespie, claims 1, 3-8)
`
`Slides 68-90
`
`• Secondary Considerations of Non-obviousness
`
`Slides 91-98
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`2
`
`2
`
`
`
`’993 Patent, Claim 1
`
`1.pre
`
`1.a
`1.b
`
`1.c
`
`1.d
`
`A non-transitory computer readable medium storing instructions, which, when executed by a processor
`of an electronic device having a touch-sensitive display screen, cause the processor to enable a user
`interface of the device,
`the user interface comprising at least two states, namely,
`(a) a tap-present state, wherein a plurality of tap-activatable icons for a respective plurality of pre-
`designated system functions are present, each system function being activated in response to a tap
`on its respective icon, and
`(b) a tap-absent state, wherein tap-activatable icons are absent but an otherwise-activatable graphic
`is present in a strip along at least one edge of the display screen for transitioning the user
`interface from the tap-absent state to the tap-present state in response to a multi-step user
`gesture comprising
`(i) an object touching the display screen within the strip, and
`(ii) the object gliding on the display screen away from and out of the strip.
`
`Petition, 27-48.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`3
`
`3
`
`
`
`’993 Patent, Dependent Claims 2-8
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`The computer readable medium of claim 1, wherein any state transition elicited by a user gesture that
`begins at a location at which the otherwise-activatable graphic is provided, transitions to the tap-present
`state.
`The computer readable medium of claim 1, wherein the tap-present state does not display the tap-
`activatable icons within a window frame.
`The computer readable medium of claim 1, wherein the plurality of pre-designated system functions
`comprises a help function.
`The computer readable medium of claim 1, wherein the plurality of pre-designated system functions
`comprises a clock function.
`The computer readable medium of claim 1, wherein the plurality of pre-designated system functions
`comprises an alarm function.
`The computer readable medium of claim 1, wherein the strip is less than a thumb's width wide within
`the display screen.
`The computer readable medium of claim 1, wherein the multi-step user gesture comprises (i) the object
`touching the otherwise-activatable graphic, and (ii) the object gliding on the display screen away from
`and out of the strip.
`
`Petition, 48-63.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`4
`
`4
`
`
`
`’993 Patent Prior Art
`
`Hisatomi
`JP Published Patent. App.
`No. 2002-55750
`
`Ren
`“Improving Selection on Pen-Based
`Systems,” ACM Transactions on
`Computer-Human Interaction
`
`Hansen
`U.S. 5,821,930
`
`Gillespie
`U.S. Patent Appl. Pub. No.
`2005/0024341
`
`EX1005.
`
`EX1006.
`
`EX1029.
`
`EX1030.
`
`Petition, 10-24.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`5
`
`5
`
`
`
`Grounds
`
`Ground
`1A
`
`Claims
`1-3, 7, 8
`
`Basis
`§103
`
`Prior Art
`Hisatomi and Ren
`
`1B
`
`1C
`
`1D
`
`2A
`
`2B
`
`2C
`
`2D
`
`4
`
`5
`
`6
`
`1-3, 7, 8
`
`4
`
`5
`
`6
`
`§103
`
`§103
`
`§103
`
`§103
`
`§103
`
`§103
`
`§103
`
`Hisatomi, Ren, Allard-656
`
`Hisatomi, Ren, Tanaka
`
`Hisatomi, Ren, Kodama
`
`Hansen and Gillespie
`
`Hansen, Gillespie, Allard-656
`
`Hansen, Gillespie, Tanaka
`
`Hansen, Gillespie, Kodama
`
`Petition, 1-2.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`6
`
`6
`
`
`
`Claim Construction
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`7
`
`7
`
`
`
`The Board’s Construction
`
`Claim Term
`“tap-activatable”
`(claims 1, 3)
`
`Board’s Construction
`“activatable by a gesture that involves touching a
`screen and then lifting off the screen”
`
`Institution Decision, 22.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`8
`
`8
`
`
`
`Patent Owner’s Proposed Constructions
`Claim Term
`Patent Owner’s Proposed Construction
`“An electronic device”
`“a mobile handheld computer”
`(claim 1)
`
`“tap-activatable”
`(claim 1, 3)
`
`“system functions”
`(claim 1, 3-6)
`
`“activatable upon completion of a gesture that involves
`the input device touching a screen followed directly and
`immediately by lifting off the screen”
`“services or settings of the operating system”
`
`PO’s Response, 5, 8, 9.
`
`Petitioners' Reply, 2, 10.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`9
`
`9
`
`
`
`“An electronic device”
`(claim 1)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`10
`
`10
`
`
`
`“An Electronic Device”
`Claim Term
`“An electronic device”
`(claim 1)
`
`Patent Owner’s Proposed Construction
`“a mobile handheld computer”
`
`PO’s Response, 5-7.
`
`• Patent Owner intentionally amended claims for broader scope
`• Plain and ordinary meaning does not limit size
`• Nothing in the claim language relates to size or construction of the
`electronic device
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`11
`
`11
`
`
`
`“An Electronic Device”
`
`Bederson: “[T]he claim [does not] recite any language that would inform a
`POSA that the claimed device should be limited to a ‘mobile handheld’
`device.” EX1051, ¶18.
`
`Petitioner’s Reply, 1-2.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1001, claim 1
`
`12
`
`12
`
`
`
`“An Electronic Device”
`
`The file history demonstrates Patent Owner’s construction is incorrect:
`
`Petitioner’s Reply, 1-2.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`13
`
`Ex. 1003, 403
`
`13
`
`
`
`“An Electronic Device”
`
`Dr. Rosenberg agrees that the plain and ordinary meaning is not a “mobile
`handheld computer”:
`
`Petitioner’s Reply, 1-2.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`14
`
`Rosenberg Depo. Trans. (EX1052), 15:19-16:5.
`
`14
`
`
`
`“tap-activatable”
`(claims 1, 3)
`
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`15
`
`15
`
`
`
`“Tap-Activatable”
`Claim Term
`
`Board’s Construction
`
`“tap-activatable”
`(claims 1, 3)
`
`“activatable by a gesture that involves
`touching a screen and then lifting off the
`screen”
`
`Institution Decision, 22.
`
`Patent Owner’s Proposed
`Construction
`“activatable upon completion of a gesture
`that involves the input device touching a
`screen followed directly and immediately by
`lifting off the screen”
`PO’s Response, 8-9; see also POPR at 8 (proposing
`the construction “activatable upon completion of a
`gesture consisting of a downward touch on the
`display followed quickly and directly by an upward lift
`off of the display”).
`
`• No construction is needed
`• The Board correctly rejected Patent Owner’s “followed directly and
`immediately” construction
`• Unsupported by the intrinsic record
`• Unsupported by extrinsic evidence
`• Unnecessary to the proceeding as recognized by the Board
`
`Petitioners' Reply, 2-3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`16
`
`16
`
`
`
`“Tap-Activatable”
`• The parties agree the gesture of the ’993 patent’s Figure 4 is a “tap”
`
`Petitioners’ Expert
`
`PO’s Expert
`
`Bederson Decl. (EX1002) at ¶ 133.
`
`Petition, 6-7, 36-37; Petitioners' Reply, 6, 13-14.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`17
`
`Rosenberg Decl. (EX2013), ¶ 46 (showing EX1001, FIG. 4).
`
`17
`
`
`
`“Tap-Activatable”
`• The parties agree the gesture of the ’993 patent’s Figure 4 is a “tap”
`• No dispute the common and well-known tap gesture is a “tap” as claimed
`
`’993 Patent
`
`PO’s Expert
`Q. … So you would agree that a tap was a
`common gesture in 2002 to activate an icon on
`a touch user interface?
`A. Yes, I do.
`
`Rosenberg Tr. (EX1052) at 106:24-107:1; see also id. at 23:17-23 (“Tap was extremely
`well known.”), 13:15-14:2 (tap was amongst default gestures for UI widgets).
`Petitioners’ Expert
`
`EX1001, FIG. 4.
`
`Petition, 6-7, 36-37; Petitioners' Reply, 6, 13-14.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`18
`
`Bederson Decl. (EX1002) at ¶ 133.
`
`18
`
`
`
`“Tap-Activatable”
`• The parties agree the gesture of the ’993 patent’s Figure 4 is a “tap”
`• No dispute the common and well-known tap gesture is a “tap” as claimed
`• No dispute Ren’s Direct Off a→c→a route is a “tap” as claimed
`Ren
`’993 Patent
`PO’s Expert
`Q. … And you agree that the direct off strategy taught by Ren meets your
`construction of tap-activatable; is that right?
`...
`A. Yes. Direct off, in the terminology of Ren, Ren uses direct off. I
`would equate that to what one of skill in the art would understand as
`tap. ... the answer to your question is yes, direct off in Ren is
`equivalent to tap.
`
`EX1001, FIG. 4.
`
`EX1006 at FIG. 3 (excerpt,
`emphasized).
`
`Petition, 6-7, 36-37; Petitioners' Reply, 6, 13-14.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`19
`
`Rosenberg Tr. (EX1052) at 82:11-23.
`
`19
`
`
`
`“Tap-Activatable”
`
`’993 patent (EX1001), 4:41-42.
`
`• Not a definition
`• Not inconsistent with ordinary meaning
`• No support for “directly and immediately”
`• No definition of when selection (or activation) occurs,
`e.g., touch-down or touch-up
`• No reference to the timing for the gesture of Fig. 4
`• No “manifest exclusion or restriction”
`
`’993 patent (EX1001), Fig. 4.
`
`Petitioners' Reply, 11-12.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`20
`
`20
`
`
`
`“Tap-Activatable”
`
`Claim Term
`
`“tap-activatable”
`(claims 1, 3)
`
`Board’s Construction
`
`“activatable by a gesture that involves
`touching a screen and then lifting off the
`screen”
`
`Patent Owner’s Proposed
`Construction
`“activatable upon completion of a gesture
`that involves the input device touching a
`screen followed directly and immediately by
`lifting off the screen”
`
`Institution Decision, 22.
`
`Ren
`
`PO’s Response, 8-9.
`
`• The Board does not need to decide whether Ren’s
`a→b→c→a route is a “tap”
`• Neither construction excludes Ren’s a→b→c→a route
`• The claim is not limited to exclusively “tap-activatable”
`
`Petitioners' Reply, 6, 9-10.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`21
`
`EX1006 at FIG. 3 (excerpt,
`emphasized).
`
`21
`
`
`
`“system functions”
`(claims 1, 3-6)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`22
`
`22
`
`
`
`Patent Owner’s Proposed Constructions
`
`Claim Term
`“system functions”
`(claim 1, 3-6)
`
`Patent Owner’s Proposed Construction
`“services or settings of the operating system”
`
`PO’s Response, 9-13.
`• PO’s expert: “The ordinary meaning of a system function is a function that was part of the
`operating system, designed, developed, tested, and deployed by the maker of the operating
`system.”
`Rosenberg Tr. (EX1052) at 60:18-61:5.
`PO’s additional limitations on the claim based on the term “system functions”
`• PO’s Response: no “currently active application is running”
`• PO’s Response: “an icon presented within an application is not an icon for a system function”
`PO’s Response, 32.
`
`PO’s Response, 31.
`
`Petitioners' Reply, 3-5, 15-17, 19-20.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`23
`
`23
`
`
`
`“System Functions”
`• “Functions” are not limited to services or
`settings
`• No use of “operating system” in the
`specification
`• No reason to believe “help” service is different
`in a “different embodiment”
`
`Patent Owner’s Proposed Construction
`“services or settings of the operating system”
`
`* * *
`
`’993 Patent (EX1001), Fig. 1.
`Petitioners' Reply, 3-5, 16.
`
`’993 Patent (EX1001), Fig. 3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`’993 Patent (EX1001), 4:20-40.
`
`24
`
`24
`
`
`
`“System Functions”
`
`• Petitioners’ expert explained the
`ordinary meaning
`
`Petitioners' Reply, 3-5.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Bederson Supp. Dec. (EX1051), ¶¶ 28, 30-31.
`
`25
`
`25
`
`
`
`“System Functions”
`• System functions include “applications”
`
`
`
`* * ** * *
`
`’993 File History (EX1003), 572-573.
`
`Petitioners' Reply, 3-4.
`
`’993 Patent (EX1001), 4:36-40.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`’993 File History (EX1003), 566-567.
`
`26
`
`26
`
`
`
`“System Functions” and a “Current active application”
`
`’993 patent (EX1001), 4:20-25.
`
`Petitioners' Reply, 3-5, 16-17.
`
`’993 patent (EX1001), 3:57-4:7.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`27
`
`’993 Patent (EX1001), Fig. 1.
`
`’993 Patent (EX1001), Fig. 3.
`
`27
`
`
`
`“System Functions” – No Intrinsic Record Exclusions
`
`PO’s Sur-reply at 9.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`’993 File History (EX1003), 414-415.
`
`28
`
`28
`
`
`
`Ground 1
`Claims 1-8 are Obvious
`in light of Hisatomi (Ex. 1005) and Ren (Ex. 1006)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`29
`
`29
`
`
`
`Alleged Earlier Invention Date
`
`It is settled that in establishing conception a party must show possession of every feature
`recited in the count, and that every limitation of the count must have been known to the
`inventor at the time of the alleged conception. Davis v. Reddy, 620 F.2d 885, 889, 205 USPQ
`1065, 1069 (CCPA 1980). Conception must be proved by corroborating evidence which shows
`that the inventor disclosed to others his "completed thought expressed in such clear terms as to
`enable those skilled in the art" to make the invention. Field v. Knowles, 183 F.2d 593, 601, 37
`CCPA 1211, 1222, 86 USPQ 373, 379 (1950).
`
`Coleman v. Dines, 754 F. 2d 353, 359 (Fed. Cir. 1985).
`
`Petitioners' Reply, 5-6.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`30
`
`30
`
`
`
`Hisatomi is Prior Art
`• ’993 Patent: priority claim to December 10, 2002
`• Hisatomi: published February 20, 2002
`
`EX1001.
`
`EX1005.
`
`• Patent Owner has not established an earlier invention date
`• No inventor declaration
`• No contemporaneous corroborating evidence
`• No limitation-by-limitation analysis
`• No mention of PO’s proposed claim constructions, e.g., “system
`functions,” no active application
`• No mention of dependent claims
`• PO witnesses confirmed N1 devices lacked claim elements
`
`Petitioners' Reply, 5-6.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`31
`
`31
`
`
`
`Hisatomi—Published February 2002—is Prior Art
`• No contemporaneous corroborating evidence
`
`Backlund Dec. (EX2016) at ¶ 3.
`
`Bystedt Dec. (EX2015) at ¶ 4.
`
`Petitioners' Reply, 5-6.
`
`EX2014
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`32
`
`32
`
`
`
`Hisatomi – Published February 2002 – is Prior Art
`Patent Owner does not tie the alleged earlier invention to claim limitations
`• “a touch-sensitive display that a user could … navigate using swiping gestures executed by the user’s
`thumb.” PO’s Response at 13-14.
`• “programming for unlocking the phone by swiping along the bottom of the display from one side to the
`other.” PO’s Response at 15.
`• “the idea of a mobile phone programmed to use swiping gestures for navigation … .” PO’s Response at 16.
`
`× “an otherwise-activatable graphic is present in a strip”
`× “transitioning the user interface … in response to a multi-step user gesture
`comprising (i) an object touching the display screen within the strip, and (ii) the
`object gliding on the display screen away from and out of the strip”
`× “tap-present state” and “tap-absent state”
`× “a plurality of tap-activatable icons for … pre-designated system functions”
`
`Petitioners' Reply, 5-6.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`33
`
`33
`
`
`
`’993 Patent, Claim 1
`
`1.pre
`
`1.a
`1.b
`
`1.c
`
`1.d
`
`A non-transitory computer readable medium storing instructions, which, when executed by a processor
`of an electronic device having a touch-sensitive display screen, cause the processor to enable a user
`interface of the device,
`the user interface comprising at least two states, namely,
`(a) a tap-present state, wherein a plurality of tap-activatable icons for a respective plurality of
`pre-designated system functions are present, each system function being activated in response to
`a tap on its respective icon, and
`(b) a tap-absent state, wherein tap-activatable icons are absent but an otherwise-activatable graphic
`is present in a strip along at least one edge of the display screen for transitioning the user
`interface from the tap-absent state to the tap-present state in response to a multi-step user
`gesture comprising
`(i) an object touching the display screen within the strip, and
`(ii) the object gliding on the display screen away from and out of the strip.
`
`Petition, 27-48.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`34
`
`34
`
`
`
`Hisatomi – Figures 3-4
`
`Hisatomi (EX1005) at ¶ 12.
`
`Hisatomi (EX1005), Fig. 4 (emphasized, device (blue), display
`(red), touch panel sensor (green).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`35
`
`Hisatomi (EX1005), Fig. 3 (emphasized, device (blue),
`display (red).
`
`Petition, 10-11, 28.
`
`35
`
`
`
`Hisatomi Figures 5, 6
`
`Hisatomi (EX1005), Fig. 5 (emphasized).
`
`Hisatomi (EX1005), Fig. 6.
`
`Petition, 32-33, 39-40.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`36
`
`36
`
`
`
`Hisatomi Figures 7, 28
`
`Hisatomi (EX1005), Fig. 7.
`
`Hisatomi (EX1005), Fig. 28 (excerpt).
`
`Petition, 33-34.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`37
`
`37
`
`
`
`
`
`Hisatomi Figure 30Hisatomi Figure 30
`
`
`
`Petition, 35-36, 47-48., 47-48.
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`38
`
`Hisatomi (EX1005), Fig. 30 (emphasized, annotated)
`(“Settings” in original).
`
`38
`
`
`
`Hisatomi – Two Alleged Differences from Claim 1
`1) Making Hisatomi’s icons “tap-activatable”
`2) Whether Hisatomi’s icons are “for … system functions”
`
`• Making Hisatomi’s icons “tap-activatable” using the common and well-
`known “tap” selection technique disclosed by Ren would have been
`obvious to a POSA
`• Hisatomi discloses icons for system functions, even under PO’s
`construction
`
`Petition, 32-38; Petitioners' Reply, 1, 7-17.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`39
`
`39
`
`
`
`Hisatomi Figure 13 – Selection of GUI Menu Item
`
`Hisatomi (EX1005) at ¶ 55, see also ¶¶ 3, 15.
`
`Hisatomi (EX1005), Fig. 13 (emphasized).
`Hisatomi (EX1005) Fig 13 (emphasized)
`
`Petition, 34-35; Petitioners' Reply, 12.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Hisatomi (EX1005), Fig. 15 (excerpt).
`
`40
`
`40
`
`
`
`Hisatomi At Least Renders Obvious “Tap-Activatable” Icons
`
`• Hisatomi at least left it to the designer to choose the strategy used to
`“select” the disclosed icons
`
`• Board: “At best, Hisatomi appears to be silent as to the particular pen
`gesture used to select icons in a pull-out menu.”
`
`ID (Paper 24) at 29.
`
`• It would have been obvious to use the common and well-known selection
`technique of a “tap,” which is Ren’s Direct Off strategy, to select
`Hisatomi’s icons
`
`Ren (EX1006) at 391, 403, 405, 410.
`
`Petition, 32, 34, 36-38; Pet. Reply, 6, 12-13.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`41
`
`41
`
`
`
`Motivations to Make Hisatomi’s Icons “Tap-Activatable”
`
`• PO incorrectly argues that Petitioners must show a problem or deficiency
`in Hisatomi to prevail
`
`PO Response at 27-28.
`
`Google also argues that it does not *1003 need to show that there was a known problem with the
`prior art system in order to articulate the required rational underpinning for the proposed
`combination. We agree.
`
`The Court in KSR described many potential rationales that could make a modification or
`combination of prior art references obvious to a skilled artisan. 550 U.S. at 417-22, 127 S.Ct.
`1727; see also MPEP § 2143.
`
`Unwired Planet, LLC v. Google Inc., 841 F.3d 995 (Fed. Cir. 2016), 1002-1003.
`
`Petitioners' Reply, 11.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`42
`
`42
`
`
`
`2)
`
`Motivations to Make Hisatomi’s Icons “Tap-Activatable”
`1)
`“Tap” was a commonly used and well-known gesture for selection of icons or buttons, and
`confirmed by Ren as “familiar” to users
`“Tap” was one of a handful of selection techniques well-known to a POSA for selecting icons or
`buttons like Hisatomi’s, as confirmed by Ren
`3) Tap and touch were interchangeable with design tradeoffs
`4) There was motivation to use tap for icons in interfaces that also used gestures like touch and
`glide
`5) Hisatomi and Ren are from the same technology area and address the same set of challenges
`– Selection of targets in Pen-based interfaces for PDAs
`6) Ren teaches lower error rates for “tap” as compared to “touch” consistent with POSA
`knowledge
`7) Ren teaches desirability to use tap and touch in dense displays and for PDAs
`8) A POSA would have implemented “tap” for Hisatomi’s icons with no more than predictable
`results due to its widespread use
`Petition, 36-38; Petitioners' Reply, 6-15.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`43
`
`43
`
`
`
`“Tap” Was a Common and Well-Known Gesture
`“Tap” was well-known to a POSA and commonly used in touch user interfaces
`
`Petition, 36-37.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`44
`
`Bederson Dec. (EX1002) at ¶ 133.
`
`Bederson Dec. (EX1002) at ¶ 134.
`
`44
`
`
`
`“Tap” Was a Common and Well-Known Gesture
`PO’s Expert
`Q. … So you would agree that a tap was a common gesture in 2002
`to activate an icon on a touch user interface?
`A. Yes, I do.
`
`Rosenberg Tr. (EX1052) at 106:24-107:1; see also id. at 23:17-23 (“Tap was
`extremely well known.”).
`
`File History
`
`Petitioners’ Reply, 13-14.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`45
`
`’993 Patent File History (EX1003) at 321-322.
`
`45
`
`
`
`Ren Discloses Tap-Activatable Icons
`• No dispute Ren’s Direct Off a→c→a route is a “tap” as claimed
`
`’993 Patent
`
`Ren
`
`PO’s Expert
`Q. … And you agree that the direct off strategy taught by Ren meets your
`construction of tap-activatable; is that right?
`...
`A. Yes. Direct off, in the terminology of Ren, Ren uses direct off. I
`would equate that to what one of skill in the art would understand as
`tap. ... the answer to your question is yes, direct off in Ren is
`equivalent to tap.
`
`Petitioners’ Expert
`
`Rosenberg Tr. (EX1052) at 82:11-23.
`
`EX1001, FIG. 4.
`
`EX1006 at FIG. 3 (excerpt,
`emphasized).
`
`Petition, 6-7, 36-37; Petitioners' Reply, 6, 13-14.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Bederson Dec. (EX1002) at ¶ 135.
`
`46
`
`46
`
`
`
`Ren Teaches “Tap” Was Familiar, “Touch” and “Tap” Common
`Ren
`
`Ren (EX1006) at 403.
`
`Ren (EX1006) at 391.
`
`Petition, 12-13, 38.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`47
`
`47
`
`
`
`“Tap” Was One of the Handful of Well-Known Selection Techniques
`Petitioners’ Expert
`PO’s Expert
`Q. Were there any touch-sensitive
`handheld devices in 2002 that used a
`drag action to activate an icon?
`A. Oh, without -- I mean, I haven't
`studied this, but I would say the
`answer is extremely likely, yes. Drag
`was -- touch was extremely well known.
`Tap was extremely well known. Drag was
`extremely well known. It's -- these
`were all options for UI designers.
`Different GUI widgets had – graphical
`user interface widgets had default
`behaviors that exercised all of those
`behaviors.
`
`Bederson Dec. (EX1002) at ¶ 136, see also ¶ 133
`(touch screens typically used “tap” and also “drag”).
`
`Rosenberg Tr. (EX1052) at 23:17-24:2.
`
`Petition, 36-38; Petitioners' Reply, 13-14.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`48
`
`48
`
`
`
`Motivations to Make Hisatomi’s Icons “Tap-Activatable”
`PO’s expert agrees there were benefits to “tap” with design tradeoffs, and
`there were specific motivations to use “tap”
`Q. What would a POSA have thought were the benefits of using tap in 2002?
`...
`A. The benefit of using a tap? Well, again, just, you know, my answer is couched in trade offs.
`There's -- there's always trade offs when it comes to user interface design, experience versus
`inexperienced
`users, speed, accuracy, graphical design, clutter, all of these things come into play, but
`potentially depending on the situation, you could have – the benefit of a tap would primarily
`be in allowing multiple other user interface gesture techniques, such as you could have one
`function activate with the touch. You could have a second function activate with a tap or
`associated with the liftoff. You could support drag -- drag or drag and drop, we discussed the
`difference -- you know, the non-difference between those terms in most cases. If -- if
`everything always fully activates at touch, then it may preclude other interaction styles, such
`as long press, double tap, you know, double click, if you will, tap, so action on liftoff, or drag.
`So if you have a system that you want to have multiple interaction styles having something
`not necessarily activate right away on the first touch, which you may not want, it gives you
`more dimensions of freedom, if you will.
`
`Design tradeoffs
`known to a POSA
`
`Motivation to use
`“tap” in a user
`interface that uses
`“drag”
`
`Petitioners' Reply, 14.
`
`Rosenberg Tr. (EX1052) at 107:3-108:3; see also Rosenberg Dec.
`(2013) at ¶ 97; Bederson Supp. Dec. (EX1051) at ¶¶ 64-65.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`49
`
`49
`
`
`
`Motivations to Make Hisatomi’s Icons “Tap-Activatable”
`Petitioners’ expert explained the application of design considerations to
`Hisatomi
`
`Bederson Supp. Dec. (EX1051) at ¶¶ 64-65.
`
`Petitioners' Reply, 14-15.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`50
`
`50
`
`
`
`Motivations to Make Hisatomi’s Icons “Tap-Activatable”
`• PO admits “touch” and “tap” are interchangeable, as already known
`• PO is wrong that Ren preferred Direct On (“touch”)
`
`PO’s Response
`
`PO’s Expert
`
`PO’s Response at 24.
`
`Petitioners' Reply, 7.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`51
`
`Rosenberg Dec. (EX2013) at ¶ 87.
`
`51
`
`
`
`Ren Teaches Strategies for Small Pen-Based Systems
`Hisatomi
`Ren
`
`Hisatomi (EX1005), Fig. 3 (emphasized, device
`(blue), display (red).
`
`Petition, 12-13, 28, 31.
`
`Ren (EX1006) at 385; see also Bederson Dec. (EX1002) at ¶ 82.
`
`Hisatomi (EX1005), Fig. 7.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`52
`
`52
`
`
`
`Ren Teaches “Tap-Activatable” Icons Were Obvious
`
`• Ren teaches to use “tap” or “touch” for dense displays
`• Ren teaches no preference for “touch” over “tap” for dense displays
`• Ren teaches a reason a designer might choose “tap”: it is the same as
`the mouse technique familiar to users.
`
`Petition, 24-26.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`53
`
`Ren (EX1006) at 403.
`
`53
`
`
`
`Ren Teaches Design Tradeoffs for “Tap” and “Touch”
`
`• Ren teaches lower mean error
`rates for “tap” (Direct Off)
`
`• Ren teaches lower mean
`selection times for “touch”
`(Direct On)
`
`Ren (EX1006) at 410.
`
`Ren (EX1006) at 409.
`
`Petitioners Reply, 8-9.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`54
`
`54
`
`
`
`Ren Does Not Teach Away From “Tap”
`PO argues that Ren’s lower error rates for “tap” are only relevant for smaller targets
`• But Ren teaches error rates should still be considered for PDAs like Hisatomi’s
`
`Petitioners' Reply, 9.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ren (EX1006) at 405.
`
`55
`
`55
`
`
`
`A POSA Given Hisatomi’s PDA Would Have Looked to Ren
`Hisatomi
`
`Hisatomi (EX1005) at ¶ 12.
`
`Patent Owner’s expert
`admitted Hisatomi disclosed
`a “PDA” with a “small image
`display”
`
`Petition, 10, 17-18; Petitioners' Reply, 9.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Rosenberg Dec. (EX2013) at ¶¶ 57-58.
`
`56
`
`56
`
`
`
`Ren Does Not Teach Away From “Tap”
`A POSA would have known Pocket PCs in 2002 used tap-activatable “small
`targets” like Ren’s
`
`Bederson Supp. Dec. (EX1051) at ¶ 46.
`
`Petitioners' Reply, 8.
`
`HP Jornada User Guide (EX1028) at 21.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`57
`
`HP Jornada User Guide (EX1028) at 26.
`
`57
`
`
`
`Ren Does Not Teach Away From “Tap”
`PO argues: Ren teaches “touch” (Direct On) was superior to “tap” (Direct Off)
`• Dr. Rosenberg admitted Ren explicitly states no preference
`
`Rosenberg Dec. (EX2013) at ¶ 87.
`
`• Disregards Ren’s explicit teachings regarding error rates and icon size for PDAs.
`Ren (EX1006) at 405.
`• Incorrectly interprets Figure 10 – Ren states there was “no significant difference” in error
`rates for larger icons
`Ren (EX1006) at 406-408; Bederson Supp. Dec. (EX1051) at
`¶¶ 44-45.
`
`PO argues: Ren’s lower error rates for “tap” are skewed because the
`experiment included the a→b→c→a route
`•
`Inclusion of the second route does not mean the targets are not tap-activatable
`• No evidence the a→c→a route would not have also had lower error rates
`• POSA would have known the a→c→a route alone would also have lower error rates
`
`Petitioners’ Reply, 6-9.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`58
`
`58
`
`
`
`Ren Does Not Teach Away From “Tap”
`PO argues: “exchanging” “touch” for “tap” in Hisatomi’s interface “would have denigrated
`the Hisatomi interface”
`PO’s Response at 28.
`
`• Hisatomi does not teach reasons to prefer “touch” over “tap” such as for speed over accuracy
`• Only support for alleged “denigration” are PO’s mischaracterizations of Ren, but Ren does not
`criticize, discredit, or otherwise discourage the use of “tap”
`• Advantages for “touch” are design tradeoffs, would not have dissuaded a POSA from using “tap”
`• Requires a POSA reject their own knowledge regarding the benefits and intuitive nature of “tap”
`• No evidence that Hisatomi would be unlikely to work using “tap”
`
`Bederson Supp. Dec. (EX1051) at ¶¶ 47-48, 66; ’993 File History,
`EX1003, 321-322.
`
`The prior art’s mere disclosure of more than one alternative does not constitute a teaching away
`from any of these alternatives [so long as] such disclosure does not criticize, discredit, or otherwise
`discourage the [claimed] solution . . . .
`
`In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
`[J]ust because better alternatives exist in the prior art does not mean that an inferior
`combination is inapt for obviousness purposes.
`
`Petitioners' Reply, 8-11; ID (Paper 24) at 31.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`In re Mouttet, 686 F.3d 1322, 1334 (Fed. Circ. 2012).
`
`59
`
`59
`
`
`
`Hisatomi Does Not Teach Away From “Tap-Activatable” Icons
`
`• Hisatomi uses the broad term “select”
`
`• POSA would have applied design considerations
`• No teaching in Hisatomi away from “tap”
`• No teaching in Hisatomi of reasons to use “touch” over “tap”
`• No teaching to move away from common, well-known “tap” gesture
`• No teaching to disregard well-known reasons to use “tap”
`• No teaching in Hisatomi that its user interface would be “denigrated” or
`inoperable for its intended purpose if icons were selected by “tap”
`instead of “touch”
`
`Bederson Supp. Dec. (EX1051) at ¶¶ 57-63.
`
`Petitioners’ Reply, 11-14.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`60
`
`60
`
`
`
`’993 Patent – Icons For System Functions
`
`’993 Patent (EX1001), Fig. 3.
`
`Petition, 5-6, 33; Petitioners' Reply, 3-5, 15-16.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`61
`
`’993 Patent (EX1001), 4:20-40.
`
`61
`
`
`
`Hisatomi Discloses Icons For System Functions
`
`Hisatomi (EX1005), Fig. 30 (excerpt).
`
`Hisatomi (EX1005), ¶ 126.
`
`Hisatomi (EX1005), ¶ 114.
`
`Petition, 22-24; Petitioners' Reply, 15-16.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`62
`
`62
`
`
`
`Hisatomi Discloses Icons For System Functions
`
`Hisatomi (EX1005), Fig. 6.
`
`Petition, 30, 33; Petitioners' Reply, 16.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Hisatomi (EX1005),¶¶ 22-23.
`
`63
`
`63
`
`
`
`Hisatomi Discloses Icons for System Functions
`• PO’s arguments rely
`PO’s Arguments:
`•
`“These are application functions, not system functions.”
`on their continually
`PO’s Response at 31.
`changing interpretation
`“they are exactly the types of functions that the ‘993
`Patent specification described as encompassed by the
`of the claim regarding
`unclaimed embodiment that is activated when a user
`actives the graphic while a currently active application is
`an “active application”
`running.”
`PO’s Response at 31.
`“an icon presented within an application is not an icon for
`a system function, regardless of whether the function
`that it represents will ultimately involve a call to an
`operating system function.”
`PO’s Response at 32.
`“the Hisatomi device presents icons for an application –
`a digital camera application.”
`
`•
`
`•
`
`•
`
`•
`
`PO’s Response at 32-33.
`“Hisatomi discloses icons activatable within a camera
`application, which are not icons for system functions.”
`PO’s Sur-reply at 11.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`64
`
`64
`
`
`
`Hisatomi Discloses Icons For System Functions
`
`• No user interaction required to
`launch an application or close an
`application
`
`Petitioners’ Reply, 17
`
`• Camera part ≠ camera application
`
`Petition, 30, 33; Petitioners' Reply, 15-17.
`
`Hisatomi (EX1005), Fig. 9 (emphasized).
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`65
`
`65
`
`
`
`Hisatomi Discloses Icons for System Functions
`• Hisatomi’s interface is not limited to image editing; nor is the problem to be solved tied to a digital
`camera
`Petitioners’ Reply, 17
`Hisatomi
`
`Hisatomi (EX1005),¶ 243, see also ¶¶ 1, 4-7.
`
`Petitioners’ Expert
`
`Petition, 9; Petitioners' Reply, 17.
`
`Bederson Dec. (EX1002) at ¶¶ 61-62.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`66
`
`US Patent No. 5,305,435 to Bronson (EX1012), FIG. 4.
`
`66
`
`
`
`Hisatomi Renders Obvious “System Functions”
`
`4
`
`5
`
`6
`
`The computer readable medium of claim 1, wherein the plurality of pre-designated system functions
`comprises a help function.
`The computer readable medium of claim 1, wherein the plurality of pre-designated system functions
`comprises a clock function.
`The computer readable medium of claim 1, wherein the plurality of pre-designated system functions
`comprises an alarm function.
`
`Petition, 54-63.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`67
`
`67
`
`
`
`Ground 2
`Claims 1-8 are Obvious
`in light of Hansen (Ex. 1029) and Gillespie (Ex. 1030)
`
`DEMONSTRATIVE EXHIBIT – NO
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