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`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 No. IPR2021-00145
`U.S. Patent No. 8,812,993
`_____________________
`
`
`
`PETITIONERS’ RESPONSE TO PATENT OWNER’S MOTION TO
`SUBMIT SUPPLEMENTAL INFORMATION
`
`
`
`Petitioners’ Response to Motion to Submit Supp. Information
`IPR2021-00145 (U.S. Patent No. 8,812,993)
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`Patent Owner (“Neonode”) filed a motion to submit an excerpt of the
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`deposition of Petitioners’ expert, Dr. Bederson, taken in co-pending IPR2021-
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`00144. Petitioners’ informed Neonode they took no position on the motion. The
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`Board authorized a response to Neonode’s motion by email on March 7, 2022.
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`Neonode argues the testimony of Dr. Bederson is necessary to the issue of
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`whether Ren’s a→b→c→a route for Direct-Off is a “tap” within the scope of the
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`challenged claims. Paper 63 at 2. The supplemental testimony is not relevant to
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`the issues before the Board for at least two reasons:
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`1) neither Dr. Bederson nor Petitioners relied on Ren’s a→b→c→a
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`route as “tap,” and therefore the testimony Neonode seeks to submit is
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`not contradictory to the record; and
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`2) there is no dispute that Ren’s Direct-Off a→c→a route is a “tap”
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`within the scope of the challenged claims, and therefore whether
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`Ren’s a→b→c→a route is a “tap” does not need to be determined in
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`this proceeding.
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`Neonode admits the Petition does not rely on Ren’s a→b→c→a route for
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`disclosure of “tap-activatable” icons. Id. Neonode also admits that the issue raised
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`in their motion sprung from the testimony of their own expert, Dr. Rosenberg,
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`regarding whether Ren’s Direct-Off a→b→c→a route is a “tap” under his
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`construction of “tap-activatable.” Id. Dr. Rosenberg testified repeatedly, under
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`1
`
`
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`Petitioners’ Response to Motion to Submit Supp. Information
`IPR2021-00145 (U.S. Patent No. 8,812,993)
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`oath, without equivocation, that both Ren’s a→c→a route and Ren’s a→b→c→a
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`route for Direct-Off are a “tap” according to his definition of “tap-activatable.”
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`EX1052, 82:11-84:2.1 Dr. Rosenberg even explained why Ren’s a→b→c→a
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`route for Direct-Off met his construction of tap-activatable: “because what’s
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`important is was the stylus or finger or mouse cursor on the target at the moment
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`that the finger or stylus or mouse button was released.” EX1052, 83:19-84:2.
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`Petitioners and Dr. Bederson pointed out why this testimony regarding Ren’s
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`a→b→c→a route contradicted the opinions Dr. Rosenberg expressed in his
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`declaration and Neonode’s arguments about (1) the construction of “tap-
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`activatable,” and (2) what Neonode called “skewed” error rates for “tap.” See, e.g.,
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`Pet. Reply at 3, 9-10; EX1051, ¶¶ 24, 49-50. Neither Petitioners nor Dr. Bederson
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`relied on Ren’s a→b→c→a route for Direct-Off as being within the scope of the
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`term “tap” or “tap-activatable.” Accordingly, Dr. Bederson’s testimony that a
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`gesture similar to Ren’s a→b→c→a route for Direct-Off does not contradict his
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`opinions or Petitioners’ positions. Nor is a decision as to whether Ren’s
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` 1
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` Only after review of Petitioners’ reply did Neonode seek to “correct” what they
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`allege was “mistaken” testimony by Dr. Rosenberg through submission of an
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`improper errata. See Paper 54 (denying Neonode’s request to submit an errata with
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`substantive corrections).
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`2
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`
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`Petitioners’ Response to Motion to Submit Supp. Information
`IPR2021-00145 (U.S. Patent No. 8,812,993)
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`a→b→c→a route is a “tap” necessary to the proceedings because Neonode does
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`not dispute that Ren otherwise discloses “tap-activatable” targets under their own
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`construction of the term.
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`
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`Date: March 15, 2022
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`
`
`
`Respectfully Submitted,
`/David L. Holt/
`W. Karl Renner, Reg. No. 41,265
`Tiffany C. Miller, Reg. 52,032
`David Holt, Reg. 65,161
`James M. Heintz, Reg. No. 41,828
`
`Attorneys for Petitioners
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`3
`
`
`
`Petitioners’ Response to Motion to Submit Supp. Information
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq., the undersigned certifies that on
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`March 15, 2022, a complete and entire copy of this Petitioners’ Response to
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`Motion to Submit Supplemental Information were provided via email to the Patent
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`Owner as follows:
`
`Robert M. Asher
`Bruce D. Sunstein
`Timothy M. Murphy
`Arne Hans
`
` Phil J. Graves
`Greer N. Shaw
`Mark S. Carlson
`
`rasher@sunsteinlaw.com
`bsunstein@sunsteinlaw.com
`tmurphy@sunsteinlaw.com
`ahans@sunsteinlaw.com
`philipg@hbsslaw.com
`greers@hbsslaw.com
`markc@hbsslaw.com
`sunsteinip@sunsteinlaw.com
`
`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(617) 956-5938
`
`
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