Trials@uspto.gov
`571-272-7822
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`Paper 24
`Date: June 16, 2021
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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.,
`Petitioner,
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`
`IPR2021-00145
`Patent 8,812,993 B2
`
`
`
`
`
`
`
`
`
`Before MICHELLE N. ANKENBRAND, KARA L. SZPONDOWSKI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 24
`Date: June 16, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC. and APPLE, INC.,
`Petitioner,
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`
`IPR2021-00145
`Patent 8,812,993 B2
`
`
`
`
`
`
`
`
`
`Before MICHELLE N. ANKENBRAND, KARA L. SZPONDOWSKI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`IPR2021-00145
`Patent 8,812,993 B2
`
`
`
`
`INTRODUCTION
`
`Petitioners Samsung Electronics Co. Ltd., Samsung Electronics
`America, Inc., and Apple Inc. (collectively, “Petitioner”)1 filed a Petition
`(Paper 6, “Pet.”) under 35 U.S.C. §§ 311–319 requesting inter partes review
`of claims 1–8 of U.S. Patent No. 8,812,993 B2 (Ex. 1001, “the ’993 patent”).
`Patent Owner Neonode Smartphone LLC (“Neonode”)2 filed a Preliminary
`Response (Paper 23, “Prelim. Resp.”).
`Under the authority delegated to us by the Director under 37 C.F.R.
`§ 42.4(a), we may institute an inter partes review when “the information
`presented in the petition . . . and any response . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see
`also 37 C.F.R. § 42.108(c) (2019). Applying that standard, we institute an
`inter partes review of all the challenged claims of the ’993 patent for the
`reasons explained below. This is a preliminary decision, and we will base
`our final written decision on the full trial record, including any timely
`response by Neonode.
`
`
`
`BACKGROUND
`
`A. RELATED PROCEEDINGS
`
`The parties identify the following as related matters: Neonode
`Smartphone LLC v. Apple Inc., No. 6:20-cv-00505 (W.D. Tex. filed June 8,
`
`
`1 According to the Petition, the named Petitioners are the real parties in
`interest. Pet. 93.
`2 Neonode identifies itself as the real party in interest. Paper 7, 2.
`
`2
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`2020); and Neonode Smartphone LLC v. Samsung Electronics Co. Ltd., No.
`6:20-cv-00507 (W.D. Tex. filed June 8, 2020). Pet. 93–94; Paper 7, 2.
`
`B.
`
`THE ’993 PATENT (EX. 1001)
`
`The ’993 patent relates to a user interface on a device that has a touch-
`sensitive display screen. See Ex. 1001, 1:14–17, code (57). Figure 1 of the
`’993 patent, reproduced below, illustrates such a user interface:
`
`
`Figure 1 depicts a touch-sensitive area (1) on a mobile handheld device.
`Ex. 1001, 3:30–31, 3:57–60. It is divided into a menu area (2) and a display
`area (3). Id. at 3:60–61. Menu area 2 is a narrow strip along the lower part of
`touch-sensitive area 1 that contains predefined functions 21 (a general
`application-dependent function), 22 (a keyboard), and 23 (a task and file
`manager). Id. at 4:9–14.
`Figure 2, reproduced below, shows how to activate the functions in
`menu area 2:
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`Figure 2 of the ’993 patent illustrates a touch gesture by which a user may
`activate functions 21, 22, or 23 in area 2. See Ex. 1001, 4:15–19. This
`gesture begins when object 4 (in this case a finger) touches the display at
`point A within representation 21, 22, or 23, and moves in direction B away
`from menu area 2 into display area 3. Id.
`Figure 3, reproduced below, illustrates the touch screen after function
`21 has been activated:
`
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`Ex. 1001, 3:33. Figure 3 shows that after a user activates function 21 with
`the gesture as illustrated in Figure 2, display area 3 displays icons 211–216,
`which each represent services or functions depending on the currently active
`application. Id. at 4:20–23. If there is no currently active application, the
`icons may represent services or settings of the operating system, such as
`background picture, clock alarm 215, users 213, and help 211. Id. at 4:36–
`40. Analogously, selecting function 22 activates a keyboard, and selecting
`function 23 activates a library of available applications and files on the
`device. Id. at 4:43–45, 5:3–5, Figs. 5–6.
`Figure 4, reproduced below, illustrates how a user selects one of icons
`211–216 in Figure 3:
`
`
`Figure 4 is a schematic illustration showing object 4 (a finger) selecting
`function 213 by “tapping C, D on corresponding icon 213.” Ex. 1001, 4:41–
`42.
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`C.
`
`CHALLENGED CLAIMS AND GROUNDS
`
`[1.a]
`[1.b]
`
`[1.c]
`
`Sole independent claim 1, which exemplifies the other challenged
`claims, is as follows:
`[1.pre]
`1. 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.
`
`[1.d]
`
`Ex. 1001, 6:50–65 (formatting and reference letters added). Claims 2–8,
`which Petitioner also challenges, depend directly from claim 1. See id. at
`6:66–7:21.
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`Petitioner argues eight grounds (1A–D and 2A–D) for inter partes
`review, as summarized in the following table:
`Ground Claim(s)
`Challenged
`1A
`1–3, 7, 8
`1B
`4
`1C
`5
`1D
`6
`2A
`1–3, 7, 8
`2B
`4
`2C
`5
`2D
`6
`Pet. 1–2.
`
`35 U.S.C. § References
`103(a)3
`Hisatomi,4 Ren5
`103(a)
`Hisatomi, Ren, Allard-6566
`103(a)
`Hisatomi, Ren, Tanaka7
`103(a)
`Hisatomi, Ren, Kodama8
`103(a)
`Hansen,9 Gillespie10
`103(a)
`Hansen, Gillespie, Allard-656
`103(a)
`Hansen, Gillespie, Tanaka
`103(a)
`Hansen, Gillespie, Kodama
`
`
`3 35 U.S.C. § 103(a) (2006), amended by Leahy–Smith America Invents Act,
`Pub. L. No. 112-29 § 103, sec. (n)(1), 125 Stat. 284, 287, 293 (2011)
`(effective Mar. 16, 2013). The ’993 patent issued from an application filed
`on December 4, 2011, which is before the effective date of this amendment
`to section 103. See Ex. 1001, code (22).
`4 Hisatomi et al., JP 2002-55750A, published Feb. 20, 2002 (Ex. 1005,
`including certified translation).
`5 Xiangshi Ren & Shinji Moriya, Rodkin, Improving Selection Performance
`on Pen-Based Systems: A Study of Pen-Based Interaction for Selection
`Tasks, 7 ACM Transactions on Computer-Human Interaction, Sept. 2000, at
`384 (Ex. 1006).
`6 Allard et al., US 5,422,656, issued June 6, 1995 (Ex. 1007).
`7 Tanaka, US 5,249,296, issued Sept. 28, 1993 (Ex. 1008).
`8 Kodama et al., US 6,710,791 B1, filed Jan. 31, 1997, issued Mar. 23, 2004
`(Ex. 1016).
`9 Hansen, US 5,821,930, issued Oct. 13, 1998 (Ex. 1029).
`10 Gillespie et al., US 2005/0024341 A1, filed Apr. 17, 2002, based on a
`provisional application filed May 16, 2001, published Feb. 3, 2005
`(Ex. 1030).
`
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`In its Petition, Petitioner relies on the declaration of Dr. Benjamin B.
`Bederson. Ex. 1002. And for its Preliminary Response, Neonode relies on
`the declaration of Dr. Craig Rosenberg. Ex. 2001. At this preliminary stage,
`the parties do not challenge the declarants’ qualifications to offer testimony
`as expert witnesses.
`
` DISCRETION TO DENY INSTITUTION
`
`Before considering the merits of the Petition, we consider two
`threshold issues: Neonode argues that we should deny institution under the
`discretion afforded by either 35 U.S.C. §§ 314(a) or 325(d). For the reasons
`below, we decline to deny institution on either basis.
`
`A. DENIAL OF INSTITUTION UNDER § 314(a)
`
`The Director has discretion to deny institution under 35 U.S.C.
`§ 314(a). See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018). The
`Board exercises that discretion on behalf of the Director. See 37 C.F.R.
`§ 42.4(a). In determining whether to exercise that discretion, we are guided
`by the Board’s precedential decision in NHK Spring Co. v. Intri-Plex Techs.,
`Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential).
`Citing NHK Spring, Neonode contends that the Board “should
`exercise its discretion to deny institution when institution would not be
`consistent with the objective of the AIA to ‘provide an effective and efficient
`alternative to district court litigation.’” Prelim. Resp. 48 (quoting NHK
`Spring, Paper 8 at 20). According to Neonode, this condition exists here
`because Hisatomi, a foreign reference asserted under 35 U.S.C. § 102(a) (see
`Pet. 2), was published within a year of the ’993 patent’s earliest priority
`date, and Neonode believes it can antedate Hisatomi by showing conception
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`and reduction to practice before Hisatomi’s publication date. Prelim. Resp.
`55. Likewise, Neonode argues that it can antedate Gillespie, which Petitioner
`asserts under § 102(e). See id.; Pet. 2–3.
`But according to Neonode, the Hague Convention procedures needed
`to obtain discovery on these issues from key witnesses in Sweden are
`sufficiently time-consuming that it would hamper Neonode’s ability to
`defend its patent within the compressed time frame of an inter partes review.
`See Prelim. Resp. 53–56 (citing Ex. 2010 (declaration by Jakob Falkman, a
`lawyer practicing in Sweden)). Thus, Neonode contends that “deferring to
`the district court would allow discovery on this issue to be completed in a
`manner that accommodates the requirements of Swedish law, and would
`enable the priority issue to be fully and fairly litigated.” Id. at 56.
`For the reasons below, we do not find Neonode’s arguments
`persuasive, and we decline to deny institution on this basis.
`
`1.
`
`Background
`
`For Grounds 1A–D, Petitioner asserts that Hisatomi is prior art under
`§ 102(a). Pet. 2. Hisatomi has a publication date of February 20, 2002.
`Ex. 1005, code (43). For Grounds 2A–D, Petitioner asserts that Gillespie is
`prior art under § 102(e) and is entitled to a priority date of May 16, 2001.
`Pet. 3 n.2 (citing Dynamic Drinkware, LLC v. National Graphics, Inc., 800
`F.3d 1373 (Fed. Cir. 2015)); Ex. 1030, code (60) (claiming priority to a
`provisional application filed May 16, 200111).
`
`
`11 Petitioner has not, at this stage, provided evidence that Gillespie is entitled
`to the priority date of its provisional application.
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`
`The ’993 patent claims priority to a parent application filed on
`December 10, 2002. Ex. 1001, code (63); Prelim. Resp. 48. But Neonode
`argues that, in now-terminated litigation in the Southern District of Florida,
`its representatives testified “that reduction to practice and conception
`occurred much earlier.” Prelim. Resp. 48 (citing Ex. 2005 (Fed. R. Civ. P.
`30(b)(6) testimony by designees Joseph Shain and Thomas Eriksson)).
`According to Neonode, this testimony indicates that “Neonode began
`working on the first commercial embodiment of the invention claimed in the
`’993 Patent, the N1 Phone, in 2001.” Id. (citing Ex. 2005, 8:18–21).
`Neonode states that “[t]hose primarily involved were Thomas Eriksson and
`inventor Magnus Goertz.” Id. (citing Ex. 2005, 8:20–22).
`In particular, Neonode contends that Goertz and Eriksson, who are
`respectively the founder and co-founder of Neonode, attended the March
`2002 CeBIT conference in Germany where they demonstrated a prototype of
`the N1 Phone and handed out literature describing the device. Prelim. Resp.
`48–49 (citing Ex. 2005, 10:3–6, 12:22–13:1, 14:6–15:9, 16:18–24).
`Neonode also submits a Quick Start Guide for the N1 Phone, which
`describes the device’s operating system in a manner that Neonode contends
`embodies the claims of the ’993 patent. Ex. 2012; Ex. 2011 (declaration of
`counsel Philip Graves, testifying that he obtained the Quick Start Guide
`(Ex. 2012) from a box containing the Neonode N1 phone). Although the
`Quick Start Guide does not appear to be dated and there is no evidence of
`record that it was prepared in the 2001–2002 time frame, Neonode argues
`that “[i]t is reasonable to infer that the N1 phone demonstrated in March
`2002 functioned in the same way” as described in the Quick Start Guide.
`Prelim. Resp. 51.
`
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`Neonode argues that in order to obtain and produce evidence to this
`effect antedating Hisatomi and Gillespie, “Neonode will need testimony
`from the inventor, Mr. Goertz, as well as corroborating evidence in the form
`of documents or, possibly, testimony of a third party witness such as
`Mr. Eriksson.” Prelim. Resp. 51. But according to Neonode, Messrs. Goertz
`and Eriksson are residents of Sweden and neither of them is subject to the
`jurisdiction of the United States. Id. at 51–52 (citing Ex. 2007, Ex. A).
`The parties have broached this discovery issue in the related co-
`pending litigations in the Western District of Texas, and the court issued
`Letters of Request to obtain discovery from Messrs. Goertz and Eriksson on
`March 9 and April 20, 2021. Prelim. Resp. 52–53 (citing Ex. 2009); see also
`Ex. 3002 (Letter of Request in Neonode Smartphone LLC v. Samsung
`Electronics Co. Ltd., No. 6:20-cv-00507 (W.D. Tex. April 20, 2021)).
`Neonode also submits testimony from Jacob Falkman, an attorney
`practicing in Sweden, stating that as a practical result of the Hague
`Convention discovery process, “it may take more than six months, excluding
`any time expended obtaining the issuance of a Letter of Request from a U.S.
`court or other authority, to obtain discovery of broad categories of
`documents from a witness in Sweden.” Ex. 2010 ¶ 18; see also Prelim. Resp.
`53–55. Thus, Neonode argues that “it is highly unlikely that the discovery
`from Mr. Goertz and Mr. Eriksson will be available to Neonode to prove the
`’933 Patent’s true priority date in time for its response to the Petition.”
`Prelim. Resp. 55.
`
`2.
`
`Discussion
`
`Having considered Neonode’s arguments, we do not believe the
`circumstances of this case to warrant the discretionary denial of institution
`
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`under § 314(a). Namely, Grounds 2A–D are not implicated by Neonode’s
`arguments for exercising discretion to deny institution under § 314(a), and,
`as discussed below, Petitioner has demonstrated a reasonable likelihood it
`will prevail as to these grounds. See infra part IV.D. Accordingly, we do not
`find the particular facts and evidence to weigh in favor of exercising
`discretion to deny institution of inter partes review.
`Furthermore, it is still speculative as to whether the corroborative
`evidence will be sufficient to antedate Hisatomi and Gillespie, as it has yet
`to be identified. See Prelim. Resp. 51 (“Neonode will need testimony from
`the inventor, Mr. Goertz, as well as corroborating evidence in the form of
`documents or, possibly, testimony of a third party witness such as
`Mr. Eriksson.” (emphasis added)). Accordingly, it is speculative as to
`whether Neonode will pursue this argument during the course of trial.
`If Neonode does present arguments and evidence to this extent, the
`burden of persuasion is on Petitioner to show unpatentability by a
`preponderance of the evidence, and that burden never shifts to Neonode. See
`Dynamic Drinkware, 800 F.3d at 1378 (citing 35 U.S.C. § 316(e)). For its
`Patent Owner Response, Neonode only has the burden of production, or the
`burden of coming forward with evidence that Hisatomi or Gillespie, or both,
`are “not prior art because the asserted claims in the [’993] patent are entitled
`to the benefit of a filing date (constructive or otherwise) prior to” the
`publication date of Hisatomi or the priority date of Gillespie. Id. at 1380.
`To meet its initial burden of production, Neonode would not
`necessarily need the broad discovery the parties are seeking in district court
`under the Hague Convention. Because Mr. Goertz is the founder of Neonode
`and the named inventor of the ’993 patent, and Mr. Erikkson is Neonode’s
`
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`co-founder who has previously testified in district court about this subject on
`behalf of Neonode (see Prelim. Resp. 48–49; Ex. 2005), we find it
`reasonable to expect that Neonode could obtain evidence supporting the
`conception and reduction to practice of its own patent within the time frame
`of an inter partes review, at least sufficiently to meet its initial burden of
`production. If Petitioner presents evidence in its Reply that the invention
`was not actually reduced to practice as Neonode argues, Neonode will also
`have the opportunity to present rebuttal arguments in its Sur-Reply,
`including the argument that Petitioner has not met its burden of persuasion.
`See 37 C.F.R. § 42.23.
`To the extent that Neonode cannot obtain sufficient evidence to meet
`its burden of production before the due date for its Patent Owner Response,
`or if Neonode obtains additional evidence after filing its Patent Owner
`Response that it wishes to be considered at trial, we are open to resolving
`those issues as the circumstances warrant. We may, for example, extend due
`dates or authorize additional briefing. See 37 C.F.R. § 42.5(a)–(c).
`For the foregoing reasons, we decline to exercise our discretion to
`deny institution of inter partes review under § 314(a).
`
`B. DENIAL OF INSTITUTION UNDER § 325(d)
`
`Neonode contends that we should deny institution under 35 U.S.C.
`§ 325(d) because the Patent Office has previously addressed substantially
`the same prior art or arguments as those found in the Petition. Prelim. Resp.
`3. For the reasons below, the preliminary evidence does not support this
`argument, and we decline to deny institution on this basis.
`
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`Section 325(d) provides that the Director (and thus the Board acting
`on the Director’s behalf, see 37 C.F.R. § 42.4(a)) may elect not to institute a
`trial if the petition challenges a patent based on matters previously presented
`to the Office: “In determining whether to institute or order a proceeding
`under this chapter, chapter 30, or chapter 31, the Director may take into
`account whether, and reject the petition or request because, the same or
`substantially the same prior art or arguments previously were presented to
`the Office.” The Board uses a two-part framework for this determination:
`(1) whether the same or substantially the same art previously
`was presented to the Office or whether the same or substantially
`the same arguments previously were presented to the Office;
`and (2) if either condition of [the] first part of the framework is
`satisfied, whether the petitioner has demonstrated that the
`Office erred in a manner material to the patentability of
`challenged claims.
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).
`Relevant to this analysis are six factors outlined in Becton, Dickinson
`& Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15,
`2017) (precedential as to § III.C.5, first paragraph):
`(a) the similarities and material differences between the
`asserted art and the prior art involved during examination;
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`(c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for
`rejection;
`(d) the extent of the overlap between the arguments made
`during examination and the manner in which Petitioner relies
`on the prior art or Patent Owner distinguishes the prior art;
`(e) whether Petitioner has pointed out sufficiently how the
`Examiner erred in its evaluation of the asserted prior art; and
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`(f) the extent to which additional evidence and facts
`presented in the Petition warrant reconsideration of the prior art
`or arguments.
`Becton, Dickinson, Paper 8 at 17–18 (formatting added). “[T]he Becton,
`Dickinson factors provide useful insight into how to apply the framework
`under 35 U.S.C. § 325(d).” Advanced Bionics, Paper 6 at 8 (footnote
`omitted). Factors (a), (b), and (d) pertain to the first part of the Advanced
`Bionics framework, while factors (c), (e), and (f) pertain to the second part
`of that framework. Id. at 10.
`As we discuss below, the preliminary record supports Petitioner’s
`arguments as to at least the second part of the Advanced Bionics framework.
`
`1. Whether the Same or Substantially the Same Art or
`Arguments Were Presented During Prosecution
`
`The parties do not appear to dispute that neither Hisatomi nor Ren
`(asserted in Grounds 1A–D) and that both Hansen and Gillespie (asserted in
`Grounds 2A–D) were before the Examiner during prosecution of the ’993
`patent. See Pet. 83; Prelim. Resp. 59. Although Gillespie was not the subject
`of any rejection, the Examiner listed it as one of twelve references in a
`Notice of References Cited filed with an Office Action on May 12, 2012. See
`Ex. 1003, 450.
`The Examiner considered Hansen extensively during prosecution, in
`combination with references not asserted in the Petition. In an Office Action
`dated July 29, 2013, the Examiner rejected claim 21 (the predecessor to
`claim 1 of the ’993 patent) as being unpatentable over Hansen in view of
`Hirayama (Ex. 2004). Ex. 1003, 175–77. According to the Examiner,
`“Hansen fails to distinctly point out a multi-step user gesture at an
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`otherwise-activatable graphic,” and the Examiner relied on Hirayama for
`that teaching. See id. at 176.
`In response, the applicant amended the claim to add, among other
`things, the requirement that the “otherwise-activatable graphic” is “in a strip
`along at least one edge of the display screen.” Id. at 148–49. The Examiner
`then rejected this amended claim over the combination of Hansen,
`Hirayama, and Brisebois (Ex. 1033). See id. at 90–92. According to the
`Examiner, “Hansen–Hirayama fails to teach a touch sensitive strip along at
`least one edge of the display screen,” but it would have been obvious to use
`such a strip in light of Brisebois. Id. at 92.
`In response, the applicant amended claim 21 to require that the gesture
`be “away from and out of the strip” (Ex. 1003, 73 (revision marking
`omitted)), arguing that “Brisebois makes it clear that any sweeping gesture
`must be performed along the active edge in order to be processed” (id. at
`78). The Examiner allowed the pending claims on that basis. See id. at 25–
`28.
`
`Petitioner argues that the combination the Examiner considered is
`materially different from the Hansen–Gillespie combination, and that the
`Examiner used a different rationale. See Pet. 84–85. Neonode disagrees,
`arguing that “Petitioner’s arguments in support of [the] motivation to
`combine Gillespie with Hansen is the same as the Examiner’s argument for
`motivation to combine Hirayama with Hansen.” Prelim. Resp. 62.
`On the one hand, the Hansen–Hirayama–Brisebois combination
`addresses many of the same issues that Petitioner raises about the Hansen–
`Gillespie combination, and the Examiner did, at least, consider Hansen and
`
`
`
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`16
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`IPR2021-00145
`Patent 8,812,993 B2
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`Gillespie separately. On the other hand, the Examiner did not consider either
`Hisatomi or Ren, which are the basis for half the grounds of the Petition.
`However, we do not need to decide whether the art or arguments are
`“the same or substantially the same” under the first part of the Advanced
`Bionics framework, because we determine, below, that Petitioner has
`sufficiently shown that the Examiner materially erred by failing to consider
`that Hansen alone teaches “a strip along at least one edge of the display
`screen.”
`
`2. Whether Petitioner Sufficiently Demonstrates that the
`Office Erred in a Manner Material to Patentability
`
`In the second part of the Advanced Bionics framework, we consider
`whether Petitioner has sufficiently shown that the Office erred in a manner
`material to the patentability of the challenged claims. Examples of such
`errors may include misapprehending or overlooking specific material
`teachings of the relevant prior art or misapplying the law in a material way.
`See Advanced Bionics, Paper 6 at 8–9 n.9. For this analysis, Becton,
`Dickinson factors (c), (e), and (f) are particularly relevant. See id. at 10.
`Regarding Becton, Dickinson factor (c), Petitioner argues that the
`Examiner “did not specifically evaluate the prior art teachings advanced
`herein for at least the . . . ‘object gliding on the display screen away from
`and out of the strip’ limitation[],”12 and “[n]o references similar to Gillespie
`
`
`12 Petitioner also argues that the Examiner did not specifically evaluate
`Petitioner’s arguments regarding the “otherwise-activatable graphic”
`limitation. Pet. 86. In response, Neonode contends that the Examiner relied
`on Hirayama for this limitation in a manner cumulative to Petitioner’s
`reliance on Gillespie. Prelim. Resp. 64. We do not need to address this issue
`
`17
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`were applied by the Examiner or discussed by Patent Owner, much less
`included in a combination similar to the Hansen–Gillespie [combination] set
`forth herein.” Pet. 86. Regarding Becton, Dickinson factors (e) and (f),
`Petitioner also argues that the Examiner unnecessarily relied on Brisebois
`for teaching “a strip along at least one edge of the display screen,” rather
`than finding that limitation within Hansen alone. See Pet. 86–87 (citing
`Ex. 1003, 92; Ex. 1033 ¶ 38).
`In response, Neonode argues that “like Petitioners, the Examiner also
`relied on Hansen for this limitation in two office actions.” Prelim. Resp. 64
`(citing Ex. 1003, 90–91, 175–76). Alternatively, if the Examiner relied on
`Brisebois rather than Hansen to teach the “strip,” Neonode contends that this
`is “a textbook example of error that is not material to patentability,” because
`“this alleged error did not cause [the Examiner] to allow the claim.” Id. at
`66–67.
`We disagree. The prosecution history suggests that the Examiner
`relied on Brisebois—not Hansen or Hirayama—for disclosing the “strip
`along at least one edge of the display screen.” See Ex. 1003, 92 (“Hansen–
`Hirayama fails to teach a touch sensitive strip along at least one edge of the
`display screen.”). And when the applicant amended the claim to require that
`the gesture be “away from and out of the strip,” the Examiner failed to
`reconsider Hansen’s teaching as to the direction of the gesture in relation to
`the strip, likely because the Examiner had already decided that Hansen did
`not disclose the recited strip.
`
`
`because Petitioner has sufficiently shown that the Examiner materially erred
`with respect to the “away from and out of the strip” limitation.
`
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`As we discuss below, we determine that Petitioner has made a
`sufficient showing on the preliminary record that Hansen, at least in light of
`Gillespie, teaches a “strip along at least one edge of the display screen,” as
`recited in claim 1. Because the prosecution history suggests that the
`Examiner found to the contrary and failed to reconsider Hansen’s teachings
`in that regard after the applicant’s final amendment, we determine that the
`Examiner erred in a manner material to the patentability of the challenged
`claims.
`Accordingly, we decline to deny institution under § 325(d).
`
` GROUNDS OF THE PETITION
`
`For the reasons below, we determine there is a reasonable likelihood
`that Petitioner would prevail in showing that at least one of claims 1–8 is
`unpatentable under the grounds raised in the Petition. Before addressing
`those grounds in detail, we first address the level of ordinary skill in the art,
`and whether we need to construe any claim terms explicitly for our analysis.
`
`A.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`The level of ordinary skill in the pertinent art at the time of the
`invention is one of the factual considerations relevant to obviousness. See
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). It is also relevant to
`how we interpret the patent claims. See Phillips v. AWH Corp., 415 F.3d
`1303, 1312–13 (Fed. Cir. 2005) (en banc). To assess the level of ordinary
`skill, we construct a hypothetical “person of ordinary skill in the art,” from
`whose vantage point we assess obviousness and claim interpretation. See
`In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998). This legal construct
`“presumes that all prior art references in the field of the invention are
`
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`Patent 8,812,993 B2
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`available to this hypothetical skilled artisan.” Id. (citing In re Carlson, 983
`F.2d 1032, 1038 (Fed. Cir. 1993)).
`For Petitioner, Dr. Bederson testifies that a person of ordinary skill
`“would have had at least a bachelor’s degree in computer science, computer
`engineering, or the equivalent education and at least two years of experience
`in user-interface design and development. Additional years of experience
`could substitute for formal education, and vice versa.” Ex. 1002 ¶ 51; Pet. 17
`n.3 (citing this definition). Dr. Rosenberg, for Neonode’s Preliminary
`Response, states that he “will apply the same definition.” Ex. 2001 ¶ 34.
`Because Dr. Bederson’s articulation of the level of ordinary skill in
`the art appears reasonable in light of the subject matter of the ’993 patent
`and Neonode does not contest it at this stage, we adopt it for this decision.
`
`B.
`
`CLAIM CONSTRUCTION
`
`In an inter partes review, we construe a patent claim “using the same
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). This
`generally includes “construing the claim in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” Id.
`The ordinary and customary meaning of a claim term “is its meaning
`to the ordinary artisan after reading the entire patent,” and “as of the
`effective filing date of the patent application.” Phillips, 415 F.3d at 1313,
`1321. To make this determination, “we look principally to the intrinsic
`evidence of record, examining the claim language itself, the written
`
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`description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v.
`Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006).
`Petitioner does not propose any explicit claim constructions in the
`Petition. See Pet. 8.
`In its Preliminary Response, Neonode proposes that we construe the
`term tap-activatable to mean “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.” Prelim. Resp. 8. In support of this
`construction, Neonode points to Figure 4 of the ’993 patent (reproduced
`above, see supra part II.B) and the associated statement in the Specification
`that this figure “shows that selection of a preferred service or setting is done
`by tapping C, D on a corresponding icon 213.” Id. at 7 (quoting Ex. 1001,
`4:41–42).
`Neonode also relies on Dr. Rosenberg’s testimony that a person of
`ordinary skill in the art would have understood a “tap” (also known as
`“mouse up”) to be a gesture that involves (1) touching the screen and then
`(2) lifting off the screen, which was different from a touch activation “in
`which processing associated with a program or service is activated upon
`detecting the coordinates of the initial touch in a predetermined location on a
`touch sensitive screen.” Prelim. Resp. 7–8 (citing Ex. 2001 ¶ 50).
`Although Petitioner d
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