UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
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`AMERICA, INC. AND APPLE, INC.,
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`Petitioners
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`v.
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`NEONODE SMARTPHONE LLC,
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`Patent Owner
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`____________
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`Case IPR2021-00145
`U.S. Patent No. 8,095,993
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`PATENT OWNER NEONODE SMARTPHONE LLC’S
`PRELIMINARY RESPONSE
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`
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`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. 8,095,993
`
`
`
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`PATENT OWNER NEONODE SMARTPHONE LLC’S
`PRELIMINARY RESPONSE
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`
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`
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`TABLE OF CONTENTS
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`IPR2021-00145
`Preliminary Response
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`Page
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`I.
`II.
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`INTRODUCTION ........................................................................................... 1
`The ‘993 Patent ............................................................................................... 4
`A.
`Response to Petitioners’ “Prosecution History.” .................................. 4
`B.
`The ‘993 Patent Claims. ....................................................................... 5
`III. CLAIM CONSTRUCTION ............................................................................ 7
`IV. THE PTAB SHOULD DENY INSTITUTION UNDER THE
`GROUNDS PRESENTED BY THE PETITION. .......................................... 9
`A.
`The PTAB should deny institution because the Petition
`does not show a reasonable likelihood that Petitioners
`would prevail on at least one of the challenged claims. ....................... 9
`1.
`Ground 1A: The Petition does not show that
`independent Claim 1 of the ‘993 Patent would
`have been obvious over the combination of
`Hisatomi in view of POSA knowledge and/or Ren. ................ 10
`a.
`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.” ............................................................. 11
`Hisatomi does not disclose a “user interface
`comprising at least two states, namely, (a) a
`tap-present state … and (b) a tap-absent
`state.”.............................................................................. 23
`Hisatomi does not disclose “transitioning the
`user interface from the tap-absent state to
`the tap-present state.” .................................................... 24
`The Petition does not show that a POSA
`would have been motivated at the time of
`
`b.
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`c.
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`d.
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`e.
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`2.
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`b.
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`c.
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`d.
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`e.
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`invention to modify Hisatomi in view of
`POSA knowledge or Ren. .............................................. 24
`The Petition does not show that Hisatomi
`discloses “icons for … system functions,”
`“each system function being activated in
`response to a tap on its respective icon.” ...................... 31
`Ground 2A: The Petition does not show that
`independent Claim 1 of the ‘993 Patent would
`have been obvious over the combination of Hansen
`in view of Gillespie. ................................................................. 35
`a.
`Hansen does not disclose “a processor of an
`electronic device having a touch-sensitive
`display screen.” .............................................................. 35
`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.” ............................................................. 39
`Hansen does not disclose a “user interface
`comprising at least two states, namely, (a) a
`tap-present state … and (b) a tap-absent
`state.”.............................................................................. 43
`Hansen does not disclose “transitioning the
`user interface from the tap-absent state to
`the tap-present state.” .................................................... 44
`Hansen does not disclose “icons for […]
`system functions,” “each system function
`being activated in response to a tap on its
`respective icon.” ............................................................. 45
`Petitioners have not shown that Claims 2-8 would
`have been obvious because they have not shown
`that Claim 1, from which Claims 2-8 depend,
`would have been obvious. ........................................................ 47
`The PTAB should deny the Petition because institution of
`this proceeding under § 314(a) would not be consistent
`
`3.
`
`B.
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`C.
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`2.
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`3.
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`4.
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`5.
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`with the objective of the AIA to “provide an effective
`and efficient alternative to district court litigation.” .......................... 47
`The PTAB should exercise its discretion to deny
`institution under 35 U.S.C. § 325(d) as to Hansen-
`Gillespie because Hansen was considered by the
`Examiner and Gillespie is substantially the same as the
`art before the Examiner. ..................................................................... 56
`1.
`Becton, Dickinson Factor (a): The similarities and
`material differences between the asserted art and
`the prior art involved during examination. ............................... 59
`Becton, Dickinson Factors (b) and (d): The
`cumulative nature of the asserted art and the prior
`art evaluated during examination, and the extent of
`the overlap between the arguments made during
`examination and the manner in which Petitioner
`relies on the prior art. ............................................................... 59
`Becton, Dickinson Factor (c): The extent to which
`the asserted art was evaluated during examination,
`including whether the prior art was the basis for
`rejection. ................................................................................... 63
`Becton, Dickinson Factor (e): Whether Petitioners
`have pointed out sufficiently how the examiner
`erred in its evaluation of the asserted prior art. ........................ 65
`Becton, Dickinson Factor (f): The extent to which
`additional evidence and facts presented in the
`petition warrant reconsideration of the prior art or
`arguments. ................................................................................ 68
`CONCLUSION ............................................................................................. 68
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`V.
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`TABLE OF AUTHORITIES
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`IPR2021-00145
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`Page(s)
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`CASES
`Advanced Bionics, LLC v. Med-El Elektromedizinische Gerate
`GMBH, IPR2019-01469, Paper 6, at 8 (PTAB Feb. 13, 2020) ....... 56, 57, 58, 66
`Arctic Cat Inc. v. Polaris Indus., Inc.,
`
`795 Fed. Appx. 827 (Fed. Cir. 2019) ................................................................ 31
`Apple Inc. v. Voip-Pal.com, Inc.,
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`976 F.3d 1316 (Fed. Cir. 2020) ......................................................................... 39
`Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8 (Dec. 15, 2017) ................................................... passim
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ....................................................................................... 47
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) .......................................................................... 48
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) .......................................... 2, 48
`Pacing Techs., LLC v. Garmin Intern., Inc.,
`778 F.3d 1021 (Fed. Cir. 2015) .......................................................................... 36
`SAS Inst. Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ....................................................................................... 47
`STATUTES
`28 U.S.C. § 1781 ..................................................................................................... 52
`35 U.S.C. § 112(d) ............................................................................................... 6, 47
`35 U.S.C. § 314(a) ............................................................................................... 2, 47
`35 U.S.C. § 325(d) ............................................................................................. 56, 58
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`OTHER AUTHORITIES
`37 C.F.R. § 42.4(a) .................................................................................................. 47
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`TABLE OF EXHIBITS
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`Description
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`Declaration of Craig Rosenberg, Ph.D.
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`NEO
`Exhibit
`Number
`2001
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`2002
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`Craig Rosenberg, Ph.D., Curriculum Vitae
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`2003 MicroTouch Mac-‘n-Touch Technical Data Sheet
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`US Patent No. 5,406,307 (Hirayama, et al.)
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`Transcript of 30(b)(6) Videotaped Deposition of Neonode, Inc. by
`Joseph Shain and Thomas Eriksson (March 19, 2012) in the matter of
`Motorla Mobility, Inc. v. Apple Inc., CA No. 1:10cv023580, United
`States District Court for the Southern District of Florida.
`
`Transcript of Telephonic conference Before the Honorable Alan D.
`Albright (October 23, 2020), in the matter of Neonode Smartphone,
`LLC v. Apple, Inc., Docket No. WA 20-CA-505, Neonode
`Smartphone, LLC v. Apple, Inc., Docket No. WA 20-CA-507, United
`States District Court for the Western District of Texas, Waco Division
`
`Plaintiff Neonode Smartphone LLC’s Motion for Issuance of Letter of
`Request to Examine Persons, Inspect Documents, Inspect Property
`Pursuant to the Hague Convention on the Taking of Evidence Abroad
`in Civil or Commercial Matters, and Exhibit A thereto.
`
`Apple Inc.’s Unopposed Motion for Issuance of Letter of Request to
`Examine Persons and Inspect Documents Pursuant to Hague
`Convention, and Exhibit A thereto.
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`Order Granting Plaintiff Neonode Smartphone LLC’s Motion for
`Issuance of Letter of Request to Examine Persons, Inspect
`Documents, Inspect Property Pursuant to the Hague Convention on
`the Taking of Evidence Abroad in Civil or Commercial Matters
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`2010
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`Declaration of Jakob Falkman
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`NEO
`Exhibit
`Number
`2011
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`Description
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`Declaration of Philip Graves
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`2012
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`Neonode N1 Quick Start Guide, V 0.5
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`INTRODUCTION
`Samsung and Apple (“Petitioners”) cite two combinations of alleged prior
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`I.
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`art to argue that US Patent No. 8,812,993 (the “’993 Patent”) is obvious. On that
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`basis, they argue that the Patent Trials and Appeals Board (“PTAB”) should
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`institute an inter partes review in this case.
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`But Petitioners fail to show that either of their prior art combinations
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`disclose all of the recited limitations of Claim 1 of the ‘993 Patent. First, they fail
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`to show that the element of “tap-activatable icons” is disclosed in the cited prior
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`art. Consequently, they fail to show that the cited prior art discloses “two states”
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`of the user interface, one of which is “tap-present” and the other is “tap-absent.” It
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`follows that they fail to show that the cited prior art discloses a user interface that
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`enables “transitioning the user interface from the tap-absent state to the tap-
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`present state.” Second, they fail to show that the cited prior art discloses icons that
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`represent “system functions.” Third, with respect to one combination (Hansen-
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`Gillespie (Ground 2A)), they fail to show that the cited prior art discloses the
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`limitations of the ‘993 Patent in a single device with “a processor of an electronic
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`device having a touch-sensitive screen.” And finally, with respect to both cited
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`combinations, Petitioners fail to show that a Person of Skill in the Art at the time of
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`the invention claimed in the ‘993 Patent (“POSA”) would have been motivated to
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`combine the references that Petitioners rely upon.
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`Apart from Petitioners’ failure to meet their burden, the PTAB should
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`exercise its discretion to deny institution of an inter partes review here on two
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`grounds. First, the PTAB should exercise its discretion to deny institution under
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`35 U.S.C. § 314(a) because institution of an inter partes review here would not be
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`consistent with the objective of the America Invents Act (“AIA”) to “provide an
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`effective and efficient alternative to district court litigation.” NHK Spring Co. v.
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`Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018)
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`(precedential). In Petitioners’ first prior art combination, Hisatomi-Ren, it appears
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`likely that primary reference Hisatomi is not prior art, given the fact that a
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`functional prototype of a phone incorporating the patented swipe-gesture interface
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`was demonstrated at a trade show in Germany just a few weeks after Hisatomi was
`
`published, strongly suggesting that the patented interface was conceived and
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`diligently reduced to practice prior to Hisatomi’s priority date. In addition, the
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`evidence suggests that Petitioners’ secondary Gillespie reference may also not be
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`prior art, due to the inventor’s prior conception and diligence.
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`Therefore, proof of the conception date and reduction to practice of the
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`invention claimed in the ‘993 Patent is an issue in the District Court case, as it
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`would be in any inter partes review that the PTAB were to institute here.
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`However, the key direct and corroborating witnesses to the inventor’s conception
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`and reduction to practice – inventor Magnus Goertz and Thomas Eriksson, the co-
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`founders of the company that commercialized the phones incorporating the
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`patented interface – are residents of Sweden. So obtaining the evidence necessary
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`to establish the true priority date of the ‘993 Patent will require foreign discovery
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`in Sweden under the Hague Convention on the Taking of Evidence Abroad in Civil
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`and Commercial Matters. Both Patent Owner and one of the Petitioners (Apple)
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`have moved in the district court for issuance of a Letter of Request to the Swedish
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`Ministry of Justice, seeking enforcement of deposition notices and document
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`requests as against Mr. Goertz, and Patent Owner has also moved for the same
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`with respect to Mr. Eriksson. And the district court has granted Patent Owner’s
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`motion.
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`But Sweden imposes procedural requirements on the enforcement of such
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`discovery that are not likely to be met within the six months remaining before the
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`Patent Owner’s Response would be due were review to be instituted. Therefore,
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`the priority issue – which could on its own entirely dispose of Petitioners’
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`arguments – may be more efficiently and equitably addressed in the district court,
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`where the pace of enforcement in Sweden may be more easily accommodated.
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`Second, the PTAB should exercise its discretion to deny institution here
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`under 35 U.S.C. §325(d) because the art and arguments that Petitioners assert here
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`were the same or substantially the same as those previously before the Examiner
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`when the ‘993 Patent was prosecuted. In the Hansen-Gillespie combination,
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`Hansen was cited by the Examiner in two office actions, and Gillespie was
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`identified by the Examiner and the Applicant and was substantially similar to art
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`the Examiner cited in two office actions. But the Examiner allowed the ‘993
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`Patent application over the asserted prior art and arguments. And Petitioners have
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`not shown that the Examiner erred in a manner that was material to the ‘993
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`Patent’s patentability. Petitioners are not entitled to a second bite at the apple here
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`in inter partes review.
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`The PTAB should therefore deny institution of inter partes review.
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`II. THE ‘993 PATENT
`A. Response to Petitioners’ “Prosecution History.”
`Petitioners present excerpts from a select set of office actions and responses
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`as the “prosecution history.” Petition, 7. The omissions from their description of
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`this portion of the prosecution history of the ‘993 patent application materially
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`misrepresents the prosecution history.
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`The Examiner rejected application Claim 21, which corresponds to ‘993
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`Patent independent Claim 1, as obvious over the combination of Hansen in view of
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`Hirayama. EX1003, 173-181 at 175-177.
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`The Applicant amended Claim 21 to overcome Hansen-Hirayama to recite
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`that the “otherwise activatable graphic is present in a strip along at least one edge
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`of the display screen,” that the input device (“object”) touches “the display screen
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`within the strip,” and that the object glides “along the display screen away from the
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`touched location.” EX1003, 147-159 at 148-149.
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`The Examiner rejected amended Claim 21 as obvious over the combination
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`of Hansen in view of Hirayama in further view of Brisebois. EX1003, 87-97 at 90-
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`92.
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`In response, the Applicant amended Claim 21 again to overcome the
`
`combination of Hansen-Hirayama-Brisebois to recite that the object glides “on the
`
`display screen away from and out of the strip.” EX1003, 71-81 at 72-73.
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`The Examiner allowed Claim 21 and others over the prior art. EX1003, 25-
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`28 at 26.
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`The above office actions and responses are addressed in more detail in
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`Section IV, C, below.
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`B.
`The ‘993 Patent Claims.
`The ‘993 Patent has eight claims. Claim 1 is independent. Claims 2-8
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`depend from Claim 1.
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`Claim 1 is reproduced below, with emphasis supplied for the limitations that
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`are addressed in this preliminary response:
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`A non-transitory computer readable medium storing instructions,
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`which, when executed by a processor of an electronic device having
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`a touch-sensitive display screen, cause the processor to enable a user
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`interface of the device, the user interface comprising at least two
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`states, namely, (a) a tap-present state, wherein a plurality of tap-
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`activatable icons for a respective plurality of pre-designated system
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`functions are present, each system function being activated in
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`response to a tap on its respective icon, and (b) a tap-absent state,
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`wherein tap-activatable icons are absent but an otherwise-activatable
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`graphic is present in a strip along at least one edge of the display
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`screen for transitioning the user interface from the tap-absent state
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`to the tap-present state in response to a multistep user gesture
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`comprising (i) an object touching the display screen within the strip,
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`and (ii) the object gliding on the display screen away from and out of
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`the strip.
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`EX1001, 6:50-65. Since Claims 2-8 depend from Claim 1, they incorporate
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`all of the limitations of Claim 1. 35 U.S.C. § 112(d). Accordingly, this
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`Preliminary Response focuses on Petitioners’ failure to meet their burden to
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`show that the limitations of Claim 1 are disclosed in the cited prior art, and
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`that a POSA would have been motivated to make the cited prior art
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`combinations.
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`III. CLAIM CONSTRUCTION
`Respondent requests that the PTAB construe the term “tap-activatable,” as
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`used in Claim 1 of the ‘993 Patent.
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`The ‘993 Patent’s specification defines “tapping” as a gesture with at least
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`two components: “FIG. 4 shows that selection of a preferred service or setting is
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`done by tapping C, D on a corresponding icon 213.” EX1001, 4:41-42. Figure 4,
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`which illustrates “tapping,” is reproduced below:
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`
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`EX1001, FIG 4. “Tapping” as described in the specification is a gesture comprised
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`of a downward touch on the coordinates of the icon displayed on the touch-
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`sensitive screen (image C in Figure 4) followed by an upward lift off of the icon’s
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`coordinates (image D in Figure 4). Id.
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`A POSA would have understood that a “tap” as used in a gesture-based user
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`interface design for touch-sensitive screens, means a gesture in which the input
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`device (1) touches the screen, and then (2) lifts off the screen. EX2001, ¶50. This
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`gesture corresponds to a downward press on the left mouse button followed by a
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`release of the mouse button at a predetermined cursor location on a conventional
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`monitor and desktop system with a mouse as the input device. Id. A POSA would
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`have known that this gesture is referred-to in programming as “mouse up.” Id.
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`And a POSA would have understood that a “tap” gesture as used in a
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`gesture-based user interface for touch sensitive screens activates a function or
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`service associated with the tapped screen coordinates upon the user device
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`completing its lift off of the screen. EX2001, ¶50. In other words, the associated
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`function or service is activated upon “mouse up.” Id. This property would have
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`distinguished tap, in the mind of the POSA, from other known user interface
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`gestures such as touch activation, in which processing associated with a program or
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`service is activated upon detecting the coordinates of the initial touch in a
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`predetermined location on a touch sensitive screen. Id.
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`Accordingly, Patent Owner requests that the PTAB construe the term “tap-
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`activatable” to mean “activatable upon completion of a gesture consisting of a
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`downward touch on the display followed quickly and directly by an upward lift off
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`of the display.”
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`IV. THE PTAB SHOULD DENY INSTITUTION UNDER THE GROUNDS
`PRESENTED BY THE PETITION.
`A. The PTAB should deny institution because the Petition does not
`show a reasonable likelihood that Petitioners would prevail on at
`least one of the challenged claims.
`Claim 1 of the ‘993 Patent recites a “non-transitory computer readable
`
`medium storing instructions, which, when executed by a processor of an electronic
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`device having a touch-sensitive display screen cause the processor to enable a user
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`interface of the device.” EX1001, 6:50-53. In other words, the claimed user
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`interface is displayed on an electronic device having both a processor and a touch-
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`sensitive display.
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`The claimed user interface must have at least “two states.” Id., 6:54. The
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`recited “two states” are defined by the presence and absence of tap-activatable
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`icons: (1) “a tap-present state, wherein a plurality of tap-activatable icons … are
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`present, each … being activated in response to a tap on its respective icon ;” and
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`(2) “a tap-absent state, wherein tap-activatable icons are absent ….” Id., 6:54-59.
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`The user interface must provide for “transitioning the user interface from the tap-
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`absent state to the tap-present state.” Id., 6:61-62. And in the tap-present state, the
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`tap-activatable icons must represent “pre-designated system functions.” Id., 6:56.
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`Petitioners argue they have shown a reasonable likelihood that they will
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`prevail on at least one of the ‘993 Patent’s claims under 35 US.C. §103 based upon
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`two combinations of prior art. In Ground 1A, they argue that Claim 1 of the ‘993
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`Patent is obvious over the combination of Hisatomi in view of POSA knowledge
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`and/or Ren. Petition, 27-48. In Ground 2A, they argue that Claim 1 of the ‘993
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`Patent is obvious over the combination of Hansen in view of Gillespie. Id., 48-75.
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`But neither combination discloses the Claim 1 limitations quoted above. And since
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`Claims 2-8 depend from Claim 1, they incorporate all of Claim 1’s limitations, and
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`consequently Petitioners’ showing fails for the same reasons.
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`1.
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`Ground 1A: The Petition does not show that independent
`Claim 1 of the ‘993 Patent would have been obvious over
`the combination of Hisatomi in view of POSA knowledge
`and/or Ren.
`Hisatomi addresses the problem where, when a main image is displayed on a
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`“portable information terminal with a narrow display screen,” a pull-out menu will
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`cover the main image. EX1005, ¶[0004]. If the pull-out menu is made smaller, it
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`will be more difficult to read, but if a larger menu is displayed more of the main
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`image is covered. Id. And the more “function items” on the pull-out menu, the
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`more these problems increase. Id.
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`Hisatomi solves these problems with pull-out menus responsive to inputs
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`from an input device on a touch panel sensor. It discloses a portable information
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`processing device with an image display screen and a touch panel sensor that
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`receives touch coordinate instructions from a pen-type input device. EX1005,
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`¶[0012]. When the touch panel sensor is touched by the pen-type input device,
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`“the coordinate is designated by this touch, and various functions can be selected.”
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`Id., ¶[0015]. The screen has an image display area that is bordered by four pull-out
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`menu display trigger areas. Id., ¶[0018]; FIG 6. When the user touches the pen-
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`type input device to one of the pull-out menu display trigger areas and scrolls
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`toward the center of the touch panel sensor, the selected pull-out menu is
`
`displayed. Id.; FIG 12, Images D1-D7. The pull-out menus have “GUI function
`
`buttons.” Id., ¶[0025, 0037]. A touch from the input device with the coordinate
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`value of a GUI function button causes activates the selected function. Id. ¶[0055].
`
`a.
`
`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.”
`Petitioners argue that Hisatomi discloses a “tap-present state including a
`
`plurality of tap-activatable icons” when a pull-out menu having GUI function
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`buttons is displayed. Petition, 31-38. But as shown below, the pull-out menu GUI
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`function buttons are activated by the coordinates of the touch of the input device
`
`on the touch panel sensor in Hisatomi, not by a tap. Therefore, Hisatomi does not
`
`disclose a “tap-present state” with “tap-activatable icons.”
`
`Hisatomi describes the processing of a GUI function button with reference to
`
`Figure 15, reproduced in pertinent part below:
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`005079-19/1448900 V1
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`11
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`IPR2021-00145
`Preliminary Response
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`EX1004, FIG 15. The steps for initiating the processing of a GUI function button
`
`are illustrated in Figure 13, reproduced in pertinent part below:
`
`
`
`
`
`EX1004, FIG 13. Hisatomi explains with reference to Figure 13 that “in step
`
`S202, the position coordinate on the touch panel sensor 11 touched by the input
`
`device 05 will be detected.” EX1005, ¶[0054]. In step S203, the processing
`
`determines whether the coordinate value detected in step S202 is in a pull-out
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`menu display trigger area, and if not, “it is determined whether or not the specific
`
`function button (GUI function button) in the pull-out menu was selected by the
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`005079-19/1448900 V1
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`12
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`
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`input device 05 (S210); if it is selected, the selected function will be processed
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`IPR2021-00145
`Preliminary Response
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`(S211).” Id., ¶[0055].
`
`In other words, the processing associated with a GUI function button is
`
`activated (step S211) when the coordinates of the input device’s touch correspond
`
`to those of the GUI function button. EX2001, ¶52. A POSA would have
`
`distinguished between the touch-activation of Hisatomi and the tap-activation of
`
`the ‘993 Patent. Id., ¶49. In touch-activation, the processing of a function is
`
`activated upon the event of detecting the coordinates of the initial touch of the
`
`input device on the touch sensitive display within the coordinates of the desired
`
`button or icon. EX2001, ¶50. In programming, this event is referred to as “mouse
`
`down.” Id. It corresponds to pressing the left mouse button down at a particular
`
`cursor location or touching the stylus tip to the screen. Id.
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`In contrast, in tap-activation, the processing of a function is activated upon
`
`the event of the input device lifting off of the touch sensitive display from the
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`coordinates of the desired button or icon. EX2001, ¶50. In programming, this
`
`event is referred to as “mouse up.” Id. It corresponds to pressing down and then
`
`releasing the left mouse button at a particular cursor location or lifting the stylus
`
`tip off of the screen. Id. In Hisatomi, all processing, whether of the menu displays
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`or the GUI function buttons, is activated upon the event of detecting the
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`coordinates of the touch. EX2001, ¶51.
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`005079-19/1448900 V1
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`13
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`
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`Nowhere in Hisatomi is there a disclosure of processing that is activated
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`IPR2021-00145
`Preliminary Response
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`upon the event of the pen-type stylus lifting off of the touch panel sensor (mouse
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`up). EX2001, ¶51. Hisatomi defines “OFF” to mean “that the touch panel sensor
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`11 will no longer be in contact with the input device 05 and the coordinate will no
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`longer be detected.” EX1005, ¶[0039]. But contrary to tap-activation, an “OFF”
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`event in Hisatomi causes the processing to stop and return to the touch coordinate
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`detection step. EX2001, ¶55.
`
`For example, FIG 10 illustrates the processing associated with displaying a
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`pull-out menu, reproduced below:
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`005079-19/1448900 V1
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`14
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`
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`EX1005, FIG 10. Hisatomi explains that even if the coordinate value of the input
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`IPR2021-00145
`Preliminary Response
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`device touch is in a pull-out menu trigger area, “if it went OFF, the process will
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`return to step S101.” Id., ¶[0041]; EX2001, ¶53. Similarly, if the selected pull-out
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`menu display trigger area is highlighted and displayed, “if it went OFF during this
`
`period, the process will return to step S101.” EX1005, ¶[0043; EX2001, ¶53.
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`Similarly, Figure 12 illustrates the drag gesture to open the pull-out menu,
`
`reproduced below:
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`
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`005079-19/1448900 V1
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`15
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`
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`EX1005, FIG 12. The steps of the processing are illustrated in Figure 11,
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`IPR2021-00145
`Preliminary Response
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`reproduced below:
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`
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`EX1005, FIG 11. Hisatomi explains that in step 114, “the display amount of the
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`pull-out menu will be updated according to the Y coordinate value generated by
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`the input device 05,” but if “the menu pull-out amount y is less than the defined
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`amount, if it became OFF as shown on screen D5 in FIG. 12, the process of pulling
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`out the menu will be cancelled midway and the process will return to step S101
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`(S115).” Id., ¶[0047-0048, 0052]. Step S101 is the full-image display mode that
`
`precedes coordinate detection. Id., FIG 10. If the Y coordinate exceeds the
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`defined amount when the OFF event occurs, “the process of pulling out the pull-
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`out menu will be stopped….” Id., ¶ [0048, 0052]
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`005079-19/1448900 V1
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`16
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`
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`With reference to Figure 12, image D2 (reproduced above), Hisatomi
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`IPR2021-00145
`Preliminary Response
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`illustrates the associated processing in Figure 10, reproduced below:
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`
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`EX1005, FIG 10. Hisatomi explains “as shown on screen D2 in FIG 12, even if
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`the detected coordinate value is included in one of the pull-out menu display
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`trigger areas 11A to 11D, if it went OFF, the process will return to step S101.” Id.,
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`¶[0041]. Similarly, in steps S105 and S112, a touch in the pull-out menu display
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`trigger area followed by a drag will cause the pull-out menu to be displayed, but “if
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`it went OFF during this period, the process will return to step S101.” Id., ¶[0043].
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`005079-19/1448900 V1
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`17
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`
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`And most pertinently here, Figure 13 illustrates the steps for determining
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`IPR2021-00145
`Preliminary Response
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`which pull out menu is selected and for activating the processing associated with a
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`GUI function button, reproduced below:
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`EX1005, FIG 13. As illustrated in Figure 13, every “OFF” event causes the
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`processing to return to the coordinate detection steps S202, S203, S210. Id., FIG
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`13, ¶[0055]; EX2001, ¶52. There are many more such examples in Hisatomi. Id.,
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`
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`e.g., ¶¶[0048, 0052, 0057].
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`005079-19/1448900 V1
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`18
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`
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`In each instance disclosed in Hisatomi, processing is activated by detecting
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`IPR2021-00145
`Preliminary Response
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`the coordinates of the pen-type stylus’s touch on the touch sensitive screen (mouse
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`down) at a corresponding pre-defined location. EX2001, ¶51. An “OFF” event
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`(mouse up), terminates any active processing and loops back to the coordinate
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`detection step. Id. Therefore, Hisatomi does not disclose a “tap-present state”
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`with “tap-activatable icons.” Id.
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`Petitioners assert that Hisatomi discloses tap-activatable icons, but do not
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`cite any disclosure of tap-ac
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