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
`
`
`
`
`
`
`DECLARATION OF CRAIG ROSENBERG, Ph.D.
`
`
`
`
`
`
`
`
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2001
`
`

`

`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`INTRODUCTION ........................................................................................... 1
`
`QUALIFICATIONS ........................................................................................ 1
`
`TESTIFYING EXPERIENCE ......................................................................... 8
`
`INFORMATION CONSIDERED ................................................................... 9
`
`RELEVANT LEGAL STANDARDS ...........................................................10
`
`A.
`
`B.
`
`C.
`
`D.
`
`Claim Interpretation ............................................................................10
`
`Perspective of one of Ordinary Skill in the Art ..................................11
`
`Obviousness .........................................................................................11
`
`Summary of my Opinions ...................................................................14
`
`VI.
`
`THE ‘993 PATENT .......................................................................................14
`
`A.
`
`B.
`
`C.
`
`Priority Date. .......................................................................................14
`
`Level of Skill Ordinary in the Art. ......................................................14
`
`Claim Construction..............................................................................15
`
`VII. DETAILED EXPLANATION OF PATENTABILITY ................................15
`
`A.
`
`Claim 1 is not Rendered Obvious by the combination of
`Hisatomi in view of POSA Knowledge and/or Ren. ..........................16
`
`1.
`
`2.
`
`Hisatomi does not disclose a “tap-present state”
`wherein “a plurality of tap-activatable icons […]
`are present, each […] being activated in response
`to a tap on its respective icon.” .................................................17
`
`There would have been no motivation at the time
`of invention to modify Hisatomi with either POSA
`knowledge of tap or Ren. ..........................................................29
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
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`3.
`
`4.
`
`Hisatomi does not disclose a “user interface
`comprising at least two states, namely, (a) a tap-
`present state … and (b) a tap-absent state.” .............................35
`
`Hisatomi does not disclose “icons for a respective
`plurality of pre-designated system functions, each
`system function being activated in response to a
`tap on its respective icon.” ........................................................37
`
`B.
`
`Claim 1 is not rendered obvious by Hansen in view of
`Gillespie. ..............................................................................................39
`
`1.
`
`2.
`
`3.
`
`4.
`
`Hansen does not disclose “a processor of an
`electronic device having a touch-sensitive display
`screen.”......................................................................................40
`
`Hansen does not disclose a “tap-present state”
`wherein “a plurality of tap-activatable icons […]
`are present, each […] being activated in response
`to a tap on its respective icon.” .................................................46
`
`Hansen does not disclose a “user interface
`comprising at least two states, namely, (a) a tap-
`present state … and (b) a tap-absent state.” .............................51
`
`Hansen does not disclose “icons for a respective
`plurality of pre-designated system functions,”
`“each system function being activated in response
`to a tap on its respective icon.” .................................................52
`
`ii
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
`
`1.
`
`I, Craig Rosenberg, Ph.D., declare as follows:
`
`I.
`
`INTRODUCTION
`
`2.
`
`I have been retained by Neonode Smartphone LLC (“Respondent”) as
`
`an independent expert consultant in this inter partes review (“IPR”) proceeding
`
`before the United States Patent and Trademark Office (“PTO”).
`
`3.
`
`I have been asked by Respondent’s counsel (“Counsel”) to consider
`
`whether certain references cited by Samsung and Apple (“Petitioners”) in
`
`combination render Claim 1 of U.S. Patent No. 8,812,993 (“the ‘993 Patent”)
`
`obvious (EX1001). My opinions and the bases for my opinions are set forth below.
`
`4.
`
`I am being compensated at my ordinary and customary consulting rate
`
`for my work, which is $450 per hour. My compensation is in no way contingent on
`
`the nature of my findings, the presentation of my findings in testimony, or the
`
`outcome of this or any other proceeding. I have no financial interest in this
`
`proceeding.
`
`II. QUALIFICATIONS
`
`5.
`
`All of my opinions stated in this declaration are based on my own
`
`personal knowledge and professional judgment. In forming my opinions, I have
`
`relied on my knowledge and experience in human factors, user interface design,
`
`user interaction design, human-computer interaction, and software engineering.
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
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`6.
`
`I am over 18 years of age and, if I am called upon to do so, I would be
`
`competent to testify as to the matters set forth herein. My qualifications to testify
`
`about the ‘993 patent and the relevant technology are set forth in my curriculum
`
`vitae (“CV”), which I have included as EX2002. In addition, a brief summary of
`
`my qualifications is included below,
`
`7.
`
`I hold a Bachelor of Science in Industrial Engineering, a Master of
`
`Science in Human Factors, and a Ph.D. in Human Factors from the University of
`
`Washington School of Engineering. For 30 years, I have worked in the areas of
`
`human factors, user interface design, software development, software architecture,
`
`systems engineering, and modeling and simulation across a wide variety of
`
`application areas, including aerospace, communications, entertainment, and
`
`healthcare.
`
`8.
`
`I graduated from the University of Washington in 1988 with a B.S. in
`
`Industrial Engineering. After graduation, I continued my studies at the University
`
`of Washington. In 1990, I obtained an M.S. in Human Factors. In 1994, I
`
`graduated with a Ph.D. in Human Factors. In the course of my doctoral studies, I
`
`worked as an Associate Assistant Human Factors Professor at the University of
`
`Washington Industrial Engineering Department. My duties included teaching,
`
`writing research proposals, designing and conducting funded human factors
`
`experiments for the National Science Foundation, as well as hiring and supervising
`
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
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`students. While studying at the University of Washington, I also worked as a
`
`human factors researcher and designed and performed advanced human factors
`
`experiments relating to virtual environments and interface design, stereoscopic
`
`displays, and advanced visualization research, which was funded by the National
`
`Science Foundation. My duties included user interface design, systems design,
`
`software development, graphics programming, experimental design, as well as
`
`hardware and software interfacing.
`
`9.
`
`I have published twenty-one research papers in professional journals
`
`and proceedings in the areas of user interface design, computer graphics, and the
`
`design of spatial, stereographic, and auditory displays. I also authored a book
`
`chapter on augmented reality displays in the book “Virtual Environments and
`
`Advanced Interface Design” (Oxford University Press, 1995). In addition, I created
`
`one of the first virtual spatial musical instruments called the MIDIBIRD that
`
`utilized the MIDI protocol, two six-dimensional spatial trackers, a music
`
`synthesizer, and a computer graphics workstation to create an advanced and novel
`
`musical instrument.
`
`10.
`
`For the past 21 years, I have served as a consultant for Global
`
`Technica, Sunny Day Software, Stanley Associates, Techrizon, CDI Corporation,
`
`and the Barr Group. In this capacity, I have provided advanced engineering
`
`services for many companies.
`
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`11.
`
`I consulted for the Boeing Company for over 16 years as a senior
`
`human factors engineer, user interface designer, and software architect for a wide
`
`range of advanced commercial and military programs. Many of the projects that I
`
`have been involved with include advanced software development, user interface
`
`design, agent-based software, and modeling and simulations in the areas of missile
`
`defense, homeland security, battle command management, computer aided design,
`
`networking and communications, air traffic control, location-based services, and
`
`Unmanned Aerial Vehicle (“UAV”) command and control. Additionally, I was the
`
`lead system architect developing advanced air traffic controller workstations and
`
`air traffic control analysis applications, toolsets, and trade study simulations for
`
`Boeing Air Traffic Management.
`
`12.
`
`I was also the architect of the Boeing Human Agent Model. The
`
`Boeing Human Agent Model is an advanced model for the simulation of human
`
`sensory, cognitive, and motor performance as applied to the roles of air traffic
`
`controllers, pilots, and UAV operators. In another project, I was the lead human
`
`factors engineer and user interface designer for Boeing’s main vector and raster
`
`computer aided drafting and editing system that produces the maintenance
`
`manuals, shop floor illustrations, and service bulletins for aircraft produced by the
`
`Boeing Commercial Aircraft Company. Additional responsibilities in my time as a
`
`consultant include system engineering, requirements analysis, functional
`
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`specification, use case development, user stories, application prototyping,
`
`modeling and simulation, object-oriented software architecture, graphical user
`
`interface analysis and design, as well as UML, C++, C#, and Java software
`
`development.
`
`13.
`
`In 1995 and 1996, I was hired as the lead human factors engineer and
`
`user interface designer for the first two-way pager produced by AT&T. Prior to
`
`this technology, people could receive pages but had no way to respond utilizing
`
`their pager. This new technology allowed users to use a small handheld device to
`
`receive and send canned or custom text messages, access and update an address
`
`book, and access and update a personal calendar. This high-profile project involved
`
`designing the entire feature set, user interface/user interaction design and
`
`specification, as well as all graphical design and graphical design standards.
`
`14.
`
`From 1999–2001, I was the lead human factors engineer and user
`
`interface designer for a company called Eyematic Interfaces that was responsible
`
`for all user interface design and development activities associated with real-time
`
`mobile handheld 3D facial tracking, animation, avatar creation and editing
`
`software for a product for Mattel. My work involved user interface design, human
`
`factors analysis, requirements gathering and analysis, and functional specifications.
`
`15.
`
`In 2001, I was the lead user interface designer for a company called
`
`Ahaza that was building IPv6 routers. I designed the user interfaces for the
`
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
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`configuration and control of these advanced network hardware devices. My
`
`responsibilities included requirements analysis, functional specification, user
`
`interface design, user experience design, and human factors analysis.
`
`16.
`
`In 2006-07, I was the lead user interface designer for a company
`
`called ObjectSpeed that developed a portable handheld telephone for use in homes
`
`and businesses that had many of the same capabilities that we take for granted in
`
`mobile cellular phones. This portable multifunction device supported voice, email,
`
`chat, video conferencing, internet radio, streaming media, Microsoft Outlook
`
`integration, photo taking and sharing, etc. The ObjectSpeed device was
`
`specifically designed and developed as a portable handheld device.
`
`17.
`
`I am the founder, inventor, user interface designer, and software
`
`architect of WhereWuz. WhereWuz is a company that produces advanced mobile
`
`software running on GPS-enabled smartphones and handheld devices. WhereWuz
`
`allows users to record exactly where they have been and query this data in unique
`
`ways for subsequent retrieval based on time or location. WhereWuz was
`
`specifically designed and developed to run on small handheld devices.
`
`18.
`
`I am the co-founder of a medical technology company called
`
`Healium. Healium developed advanced wearable and handheld user interface
`
`technology to allow physicians to more effectively interact with electronic medical
`
`records.
`
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
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`19.
`
`I am the co-founder of a medical technology company called
`
`StratoScientific. StratoScientific is developing an innovative case for a smartphone
`
`that turns a standard handheld smartphone into a full featured digital stethoscope
`
`that incorporates visualization and machine learning that can be utilized for
`
`telemedicine and automated diagnosis.
`
`20.
`
`In 2012-13, I designed and developed a large software project for
`
`Disney World called xVR that allowed the operational employees of Disney World
`
`to utilize a handheld device to view the current and historical status of all of the
`
`guests of Disney World within multiple attractions as well as within one of their
`
`restaurants. The application could run in a real-time/live mode where it would
`
`display data collected from sensors that showed the location and status of all guests
`
`within the attraction; the application could also be run in a fast-time/simulated
`
`mode. The application was developed on a laptop computer and was specifically
`
`designed to run on a variety of devices, including laptops, PCs, smartphones, and
`
`tablets.
`
`21.
`
`I have received several awards for my engineering work relating to
`
`interface design, computer graphics, and the design of spatial, stereographic, and
`
`auditory displays, including a $10,000 scholarship from the I/ITSEC for advancing
`
`the field of interactive computer graphics for flight simulation and a Link
`
`Foundation award for furthering the field of flight simulation and virtual interface
`
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`Declaration of Craig Rosenberg, Ph.D.
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`design. I have also created graphics for several popular book covers as well as
`
`animations for a movie produced by MIRAMAR.
`
`III. TESTIFYING EXPERIENCE
`
` Foursquare Labs v. Silver State Intellectual Technologies, IPR2014-
`00159
`
` Silver State Intellectual Technologies v. Garmin, District of Nevada,
`2:11-cv-01578-PMP-PAL
`
` Select Retrieval v. Overstock, District of Delaware, 1:11-cv-00812-RGA
`
` Location Labs v. LocatioNet, IPR2014-00199
`
` Intellectual Ventures v. Google, IPR2014-00787
`
` FTC v. Amazon, 2:14-cv-01038-JCC (Eastern District of Texas)
`
` Valmont v. Lindsay, IPR2015-01039
`
` Ford Class Action, 13-cv-3072-EMC (N.D. California.)
`
` BeUbiq v. Curtis Consulting Group, 1-14-cv-270691 (S.D.N.Y.)
`
` Edulog v. DML, DV-06-1072 (Montana Fourth Judicial Court, Missoula)
`
` GEMSA v. Alibaba, 6:16-cv-00098 (M.D. Florida)
`
` Level One Technologies v. Penske Truck Leasing, 4:14-cv-1305-RWS
`(E.D. Missouri)
`
` Title Source v. HouseCanary, 016-CI-06300 (Texas Dist. (state court),
`Bexar Co.)
`
` Sony v. Arris, Pace, 337-TA-1049 (International Trade Commission
`case)
`
` Tatsoft v. InduSoft, D-1-GN-14-001853 (Texas state court case)
`
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` Courthouse News Service v. Yamasaki, 8:17-cv-00126 AG (KESx) (C.D.
`Cal.)
`
` Princeton Digital Image Corp. v. Konami, 12-1461-LPS-CJB (D. Del)
`
` FCA US LLC Monostable Electronic Gearshift Litigation, 16-md-02744
`(E.D. Michigan)
`
` Barbaro Technologies, LLC. v. Niantic, Inc., 3:18-cv-02955-RS (N.D.
`California)
`
` Blackberry Limited. v. Facebook, Inc., 2:18-cv-01844 (C.D. California)
`
` Blackberry Limited. v. Snap, Inc., 2:18-cv-02693 (C.D. California)
`
` Saracen LLC v. Marginal Unit, Inc., 4:18-cv-3714 (S.D. Texas)
`
` Fidelity Information Services, LLC v. Groove Digital, Inc., IPR2019-
`00050
`
` U.S. Oil & Refining Co., v. City of Tacoma, 18-2-07232-3 (Superior
`Court of Washington)
`
` X One v. Uber, 5:16-CV-06050-LHK (N.D. California, San Jose Div.)
`
` Kipu Systems, LLC v. ZenCharts, LLC, 1:17-cv-24733-KMW-EGT (S.D.
`Florida)
`
` Maxell, LTD., v. Apple Inc., 5:19-cv-0036-RWS (E.D. Texas)
`
` Aatrix Software, Inc. v. Green Shades Software, Inc., 3:15-cv-00164-J-
`lOMCR (M.D. Florida)
`
` Universal Electronics Inc. v. Roku, Inc., 337-TA-1200 (I.T.C)
`
`IV.
`
`INFORMATION CONSIDERED
`
`22.
`
`In preparing this declaration, I have considered the materials
`
`discussed in this declaration, including, for example, the ‘993 Patent, the
`
`references cited by the ‘993 Patent, the prosecution histories of the ‘993 Patent and
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`Declaration of Craig Rosenberg, Ph.D.
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`applications derived therefrom (including the references cited therein), various
`
`background articles and materials referenced in this declaration, and the prior art
`
`references identified in this declaration. And my opinions are further based on my
`
`education, training, experience, and knowledge in the relevant field.
`
`23.
`
`In addition, I have considered the exhibits filed concurrently with my
`
`declaration, including the following:
`
`Exhibit
`Number
`
`Description
`
`Exhibit 2003 MicroTouch Mac-‘n-Touch Technical Data Sheet
`
`Exhibit 2004 US Patent No. 5,406,307 (Hirayama, et al.)
`
`V.
`
`RELEVANT LEGAL STANDARDS
`
`24.
`
`I am not an attorney and offer no legal opinions. For the purposes of
`
`this Declaration, I have been informed about certain aspects of the law that are
`
`relevant to my analysis, as summarized below.
`
`A.
`
`Claim Interpretation
`
`25.
`
`I have been informed and understand that in an IPR proceeding,
`
`claims are to be interpreted according to the Phillips claim construction standard.
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). I have been informed and
`
`understand that claim construction is a matter of law and that the final claim
`
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`constructions for this proceeding will be determined by the Patent Trial and Appeal
`
`Board (“PTAB”).
`
`B.
`
`Perspective of one of Ordinary Skill in the Art
`
`26.
`
`I have been informed and understand that a patent is to be understood
`
`from the perspective of a hypothetical “person of ordinary skill in the art”
`
`(“POSA”). Such an individual is considered to possess normal skills and
`
`knowledge in a particular technical field (as opposed to being a genius). I
`
`understand that in considering what the claims of a patent require, what was known
`
`prior to that patent (prior art), what a prior art reference discloses, and whether an
`
`invention is obvious or not, one must use the perspective of such a POSA.
`
`C.
`
`Obviousness
`
`27.
`
`I have been informed and understand that a patent claim is obvious
`
`under 35 U.S.C. § 103, and is therefore invalid, if the claimed subject matter, as a
`
`whole, would have been obvious to a POSA as of the date of the invention claimed
`
`in the patent based on one or more prior art references and/or the knowledge of a
`
`POSA.
`
`28.
`
`I understand that an obviousness analysis must consider (1) the scope
`
`and content of the prior art, (2) the differences between the claims and the prior art,
`
`(3) the level of ordinary skill in the pertinent art, and (4) secondary considerations,
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`Declaration of Craig Rosenberg, Ph.D.
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`if any, of non-obviousness (such as unexpected results, commercial success, long
`
`felt but unmet need, failure of others, copying by others, and skepticism of experts.
`
`29.
`
`I understand that a prior art reference may be combined with other
`
`references to disclose each element of the invention under 35 U.S.C. § 103. I
`
`understand that a reference may also be combined with the knowledge of a POSA,
`
`and that this knowledge may be used to combine multiple references. I further
`
`understand that a POSA is presumed to know the relevant prior art. I understand
`
`that the obviousness analysis may take into account the inferences and creative
`
`steps that a POSA would employ.
`
`30.
`
`In determining whether a prior art reference would have been
`
`combined with other prior art or other information known to a POSA, I understand
`
`that the following principles may be considered:
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`whether the references to be combined involve non-analogous art;
`
`whether the references to be combined are in different fields of
`endeavor than the alleged invention in the Patent;
`
`whether the references to be combined are reasonably pertinent to the
`problems to which the inventions of the Patent are directed;
`
`whether a POSA would have been motivated to combine the specified
`references, and would have had a reasonable expectation of success in
`doing so;
`
`whether a reference “teaches away” from a particular combination or
`solution;
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`f.
`
`g.
`
`h.
`
`i.
`
`j.
`
`k.
`
`l.
`
`m.
`
`n.
`
`o.
`
`p.
`
`whether the combination requires modifications that render the prior
`art unsatisfactory for its intended use;
`
`whether the combination requires modifications that change the
`principle of operation of the reference;
`
`whether the combination is of familiar elements according to known
`methods that yields predictable results;
`
`whether a combination involves the substitution of one known
`element for another that yields predictable results;
`
`whether the combination involves the use of a known technique to
`improve similar items or methods in the same way that yields
`predictable results;
`
`whether the combination involves the application of a known
`technique to a prior art reference that is ready for improvement, to
`yield predictable results;
`
`whether the combination is “obvious to try;”
`
`whether the combination involves the known work in one field of
`endeavor prompting variations of it for use in either the same field or
`a different one based on design incentives or other market forces,
`where the variations are predictable to a POSA;
`
`whether there is some teaching, suggestion, or motivation in the prior
`art that would have led one of ordinary skill in the art to modify the
`prior art reference or to combine prior art reference teachings to arrive
`at the claimed invention;
`
`whether the combination is reasonably expected to be a success; and
`
`whether the combination possesses the requisite degree of
`predictability at the time the invention was made.
`
`31.
`
`I understand that in determining whether a combination of prior art
`
`references renders a claim obvious, it is helpful to consider whether there is some
`
`teaching, suggestion, or motivation to combine the references and a reasonable
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`Declaration of Craig Rosenberg, Ph.D.
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`expectation of success in doing so. I understand, however, that a teaching,
`
`suggestion, or motivation to combine is not required.
`
`D.
`
`Summary of my Opinions
`
`32.
`
`I have been asked to consider whether the claims of the ‘993 Patent
`
`identified in the Petition are unpatentable for the reasons asserted in the Petition
`
`and in Dr. Bederson’s declaration. As explained below in detail in this declaration,
`
`it is my opinion that none of the claims of the ‘993 Patent identified in the Petition
`
`and in Dr. Bederson’s declaration are unpatentable for the reasons asserted therein.
`
`VI. THE ‘993 PATENT
`
`A.
`
`Priority Date.
`
`33.
`
`I assume that the priority date for the invention claimed in the ‘993
`
`Patent is December 10, 2002. Accordingly, when I reference the knowledge of a
`
`POSA, or how a POSA would understand various disclosures, I do so as of
`
`December 10, 2002. If the priority date of the ‘993 Patent were to be determined
`
`to be an earlier date in 2002, or in 2000 or 2001, my opinions expressed herein
`
`would not change.
`
`B.
`
`Level of Skill Ordinary in the Art.
`
`34. Dr. Bederson contends that “A POSA for the ’993 patent during the
`
`relevant time period would have had at least a bachelor’s degree in computer
`
`science, computer engineering, or the equivalent education and at least two years
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`Declaration of Craig Rosenberg, Ph.D.
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`of experience in user-interface design and development. Additional years of
`
`experience could substitute for formal education, and vice versa.” For the purpose
`
`of this declaration, I will apply the same definition of the level of skill of a POSA.
`
`35. Based on my experience, education, and training, I met the definition
`
`of a POSA in December 2002, the time of filing of the application that issued as
`
`the ’993 Patent. I also had greater knowledge and experience than a POSA. I
`
`worked with POSAs in 2002, and I am able to render opinions from the perspective
`
`of a POSA based on my knowledge and experience. My opinions concerning
`
`the ’993 Patent claims and the prior art are from the perspective of a POSA, as set
`
`forth above.
`
`C.
`
`Claim Construction
`
`36.
`
`I interpret the claims of the ’993 Patent according to the Phillips claim
`
`construction standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). I
`
`have reviewed the specification and file history of the ’993 patent from the point of
`
`view of a POSA, which informs my understanding of the scope of the claims.
`
`VII. DETAILED EXPLANATION OF PATENTABILITY
`
`37.
`
`This declaration focuses on the obviousness combinations that
`
`Petitioners assert for Claim 1 of the ‘993 patent, as supported by the Declaration of
`
`Dr. Benjamin B. Bederson filed as Exhibit 1002.
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`38.
`
`Petitioners and Dr. Bederson assert that all of the limitations of Claim
`
`1 of the ‘993 Patent are disclosed in two combinations of prior art references. For
`
`Ground 1A, they argue that the combination of Hisatomi and POSA knowledge or
`
`Ren disclose all of the limitations of Claim 1. For Ground 2A, they argue that the
`
`combination of Hansen and Gillespie disclose all of the limitations of Claim 1. I
`
`disagree as to both combinations, and I address each combination in the following
`
`paragraphs.
`
`A.
`
`Claim 1 is not Rendered Obvious by the combination of Hisatomi in
`view of POSA Knowledge and/or Ren.
`
`39.
`
`IClaim 1 recites, e.g., 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.” EX1001 6:50-54. The claimed user interface must have at
`
`least “two states.” Id., 6:54. The two claimed states are defined in part by the
`
`presence and absence of tap-activatable icons respectively: (1) “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 (2) “a tap-absent state, wherein tap-
`
`activatable icons are absent….” Id., 6:54-59. In the tap-present state, the tap-
`
`activatable icons must represent “pre-designated system functions.” Id., 6:56.
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`40. As discussed in more detail in the following paragraphs, the
`
`combination of Hisatomi and POSA knowledge and/or Ren do not disclose (1) a
`
`tap-present state with tap-activatable icons, (2) two states of which one is a tap-
`
`present state, and (3) tap-activatable icons that represent pre-designated system
`
`functions. Consequently, the invention of Claim 1 of the ‘993 patent would not
`
`have been obvious over Hisatomi in view of Ren and/or POSA knowledge.
`
`1.
`
`Hisatomi does not disclose a “tap-present state” wherein “a
`plurality of tap-activatable icons […] are present, each […] being
`activated in response to a tap on its respective icon.”
`
`41. Dr. Bederson cites Hisatomi’s menu display as the “tap-present state”
`
`and cites the GUI function buttons shown on each menu as the “plurality of tap-
`
`activatable icons.” EX1002 at ¶ 127-132. I do not agree.
`
`42. Hisatomi discloses pull-out menus called “function lists” for the
`
`“image display” of an “information processing device.” EX1005 ¶ [0007-9].
`
`Hisatomi addresses the problem where, when a main image is displayed on a
`
`“portable information terminal with a narrow display screen,” the pull-out menu
`
`will cover the main image. EX1005 ¶ [0004]. If the menu is made smaller, it will
`
`be difficult to read, but if a large menu is displayed more of the main image is
`
`covered. Id. And the more “function items” on the menu, the more these problems
`
`increase. Id. Hisatomi’s purpose is to provide function list pull-out menus that do
`
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`not hinder any editing work on an image where both are simultaneously displayed
`
`on a small image display. EX1005 ¶ [0005].
`
`43.
`
`The information processing device could be a personal digital
`
`assistant (PDA) or notebook computer (EX1005 ¶¶ [0012; 0243]), a still camera,
`
`video camera, head mounted display, car navigation system (EX1005 ¶ [0243]), or
`
`a computer workstation (EX1005 ¶ [0244]). The image display may be that of
`
`either a portable device or a full sized display. EX1005 ¶ [0242]. The image
`
`display screen has a “touch panel sensor.” EX1005 ¶¶ [0015, 0017, FIG 5].
`
`44. Hisatomi’s information processing device requires a “coordinate
`
`designation means for designating a coordinate position on the screen.” EX1005 ¶
`
`[0007]. The coordinate designation means is a “pen-type input device” with a
`
`portable-sized display (EX1005 ¶ [0012], FIG 4 input device 05). When “the touch
`
`panel sensor 11 on the image display screen 09 is touched by the pen-type input
`
`device 05, the coordinate is designated by this touch, and various functions can be
`
`selected.” EX1005 ¶ [0015].
`
`45.
`
`In Hisatomi, the touch panel sensor has a central image display area.
`
`EX1005 FIG 5. It is bordered by “the pullout menu display trigger areas 11A to
`
`11D.” EX1005 ¶ [0018]. “[W]hen it is determined that the coordinate information
`
`generated by the input device 05 exists in the pull-out menu display trigger areas,”
`
`the program goes into a standby mode, and